No Gradual Whittling Away Of Distinctiveness Among The Very Young

Alexndra Roberts: “New-School Trademark Dilution: Famous Among the Juvenile Consuming Public“:

The recently enacted Trademark Dilution Revision Act of 2006 recali-
brated the degree of fame necessary to garner protection: the TDRA applies
only to a mark “widely recognized by the general consuming public of the Unit-
ed States as a designation of source of the goods or services of the mark’s own-
er.” By privileging those major players who succeed in turning their brands into
household names, the TDRA strengthens incentives for mark-owners to ensure
their logos and brand names are well-recognized not only among adult consum-
ers, but also among children. This Article examines a set of marketing beha-
viors aimed at children that the TDRA’s revised fame standard both reflects and
rewards. Deeming fewer marks famous may serve the immediate purpose of
creating a higher bar for plaintiffs to successfully bring dilution claims, but that
bar should be set at age twenty-one to avoid rewarding firms for making loyal
consumers out of teenagers, tweens, kids and even infants.


Miller Analogy Test

Demand letter is to embarrassing information as high speed fan is to friable asbestos. Discuss, after reading this.


How To Get To $2.5 Million In Damages

How Motorola was awarded $2,508,703.31 in damages in a counterfeiting case in the Southern District of NY. Discussion of statutory damages and analysis of legal fees.
Decision Motorola Damages

Filed under: Damages


Dr Oz and Oprah Endorse This Complaint

Dr Oz and Oprah sue many many websites using their names and likenesses to push dietary supplements such as reservatol and Acai. Background here.
compaint oz



One of those in rem ACPA complaints you hear about.
Complaint in Rem Acpa



Coverage here.
Complaint Advertising.com


Pictures Not Worth 1000 Words: How To Plead Trade Dress Infringement and Dilution

Plaintiff is the authorized distributor of the BELLINI CHAIR. A registration for the shape of the chair looks like this:
bellini chair reg drawing 2.jpg
Design Within Reach had been an authorized retailer of the BELLINI chair:
bellini dnr 2.jpg
Then DNR came out with a chair that looked like this:
dnr alonzo.jpg
Plaintiff sued on trade dress infringement and dilution (Bellini complaint previously reported here).
DNR moves to dismiss the complaint.
Held as to dilution: Dismissed. Plaintiff had pled that the Bellini chair was well known to the “relevant public interested in contemporary furniture.” That is niche fame, not fame among the ‘general consuming public.’ Revenues of $1 million is nowhere near the levels where plaintiff could plausibly prove fame, as that term is used by the dilution statute.
Held as to trade dress: Dismissed without prejudice for failure to articulate a precise expression of the character and scope of the claimed trade dress. A copy of the drawing from the trademark registration and a photo of the product was INSUFFICIENT in articulating the distinctive features of the trade dress. Plaintiff had to identify the elements of the trade dress that were distintive.
Decision Bellini Trade Dress
, then came out with a chair that plaintiff alleged infringed the Bellini


Repeat After Me: There Is Such A Thing As Expedited Handling of an Application For Copyright Registration

Ownership of a copyright registration (or of a refused appllication) is necessary to bring a copyright suit. In the Second Circuit at least, it is clear that ownership of a mere pending application is insufficient.
I don’t know all the facts in the decision dismissing the complaint embeed below, so I’ll just say that I don’t get the behavior of the parties here. It seems to me that if the words “Expedited Handling of Copyright Registration” came up at the pre-motion conference, then this motion would not have had to be heard, and there wouldn’t have to be a re-filing of this copyright complaint.
Normal processing of a copyright application may take 8 months or so. You may request expedited handling of an application for copyright registration, even for an application that has already been filed. Pending litigation is an acceptable reason for granting such a request. Expedited handling may take only a week (same day registrations for ‘walk-ins’).
deicsion expedited copyright


SDNY: (c) Injunction Limited To Registered Versions

SDNY decision limiting injunction to registered versions of a software program (as opposed to extending it to unregistered ‘derivative’ versions.
Practice pointer: file for copyright registrations of new versions of a work early and often.
Decision Copyright Derivative Work


[YELLOW TAIL] Protests [DOWN UNDER]'s Use of Brackets

yellow tail label.jpg
[Yellow Tail] sues Down Under for use of brackets and trade dress.
Complaint Yellow Tail