31
Jul/12

PREMIER WINE & SPIRITS v PREMIER WINE & LIQUOR


premier v premier



31
Jul/12

Shameless Self-Promotion


There were 260 third-party domain names reflecting our client’s trademark. The names either directed to active counterfeit sites or pages o’ links leading to those sites. We brought an action and now the names belong to our client. The sites now bear a warning to consumers about counterfeit goods.

We can assist you with your brand protection needs as well.



31
Jul/12

Shirtail Inc v NBA and Hornets re I'M IN



Hornets ‘re-launch’ I’M IN campaign. Owner of I’M IN registration sues. The Hornets should be watchable this year, what with Davis and Rivers.

complaint shirtail v hornets



30
Jul/12

Article on Registrability of 3D Shapes (such as chocolate bunnies) in the EC


Article by friend of the blog Jon Wyness of MW Trademarks on the registrability, or lack thereof, in the EC, of three dimensional shapes, such as chocolate bunnies.

lindt ecj article



27
Jul/12

One More Advertising Injury Case – The Trademark In Question Was Not A Title Or Slogan


Flowers Bakeries Brands, Inc. sued Interstate Bakeries Corporation (IBC) (now Hostess) for trademark infringement, among other claims, alleging that IBC’S NATURE’S PRIDE and NATURE’S CHOICE trademarks for packaged breads were confusingly similar to Flowers’ NATURE’S OWN trademark. IBC’s insurer refused to defend IBC. IBC sought a declaration that insurer had a duty to defend IBC. IBC’s advertising policy covered titles and slogans. Eighth Circuit Court of Appeals affirmed the district court decision that insurer did not have a duty to defend IBC in the underlying litigation, as Flowers failed to allege facts that would indicate the phrase NATURE’S OWN was potentially a title or slogan under the policy.

If anyone wants to write in and explain why these policies have to be ambiguous with regard to trademark infringement, please do so.

decsiion advertising injury 11th circuit



26
Jul/12

THIS AMERICAN LIFE v THIS AMERICAN STARTUP


THIS AMERICAN LIFE v THIS AMERICAN STARTUP, both used in relation to, among other things, podcasts. We contributed to NPR and got a flash drive with several years’ worth of TAL podcasts. Interesting to note that host Ira Glass owns the trademark jointly with Chicago Public Media.

this american life this american start up



26
Jul/12

Infringer and Infringee To Be Named Later


In honor of the Olympics I’m posting a John Doe complaint filed by the Nassau Colliseum (where my wife and I saw the Dead play in the early 90′s). Also the original home of the New York Nets. We’ve discussed John Doe complaints before – this one caught my eye because it’s not brought by a performer (or its licensee) based on a future violation of the performer’s rights. This one is brought by the venue (as a licensee) based on a future violation of yet-to-be identified performers’ rights.

john doe nassau coliseum



26
Jul/12

The Most Polite Cease And Desist Letter Ever Was Not A Cease And Desist Letter


So this is a good teachable moment.

This Mashable article about “the most polite cease and desist letter ever” created quite a stir. Everybody’s tweeting it and forwarding to trademark lawyers they know. A book’s cover referred to the famous JACK DANIELS label. The owners of the JACK DANIELS trademarks asked the author of the book ‘Broken Piano For President,’ to change the cover design in future editions and they even offered to contribute to the cost of the re-design. (text of letter here). In an era where trademark owners are viewed as rapacious rent-seekers, JD has reaped a lot of good publicity.

Here’s the thing: JD didn’t assert a claim in the letter, so the letter isn’t a demand letter. There’s no reference to a law and no assertion that a right has been infringed. JD might have a claim, but it wouldn’t be a particularly strong claim.

(I speculate that) there’s a reason JD did it the way it did. Asserting a cause against the use of trademarked material in the title or cover of a book can be tricky. Asserting a bad claim can backfire.

While you can’t name a series of books HARRY POTTER, or duplicate the artwork on the cover of 50 SHADES OF GREY (ok, using that as an example was pandering on my part), it is often the case that a publisher has fair use and/or First Amendment protections with regard to a book’s title or cover art. The Hershey company tried to stop the publisher of an unauthorized bio of its founder, from using a cover that was based on the Hershey Bar trade dress. It had to settle for a disclaimer (which probably aided sales, because who would want to read an authorized bio)).

Fox News tried to stop Al Franken’s use of FAIR AND BALANCED in the title of his book. It lost at the preliminary injunction phase and dropped the suit. Sales of the Franken book went through the roof.

In a situation where the trademark owner has a negligible claim, huffing, puffing and bluffing can backfire. In one instance, the trademark owner hedged by sending a ‘demand-letter sounding’ letter to a writer who had parodied the trademark in the title of a blog column. The pseudo-demand letter noted that the trademark owner owned a trademark, that there was such a thing as the dilution statute, and that dilution of its trademark was a bad thing. What the letter never actually said to the letter’s recipient was that what the writer had done constituted dilution (or was unlawful in any way). Nevertheless, the letter demanded that the recipient change what it had written. The trademark owner didn’t like something, so it had a lawyer send a letter that looked like a lawyer letter, but wasn’t. The trademark owner was widely subjected to criticism for its heavy-handedness.

One snarky trademark blogger said at the time,: ‘what the trademark owner was asking for was a favor. When you ask for a favor, say ‘please’ and ‘thank you.’

So clearly influenced by those sage words, JD asked for a favor here, nicely, and offered to pay for the favor.

To summarize: baseless threat – bad; ‘please’ and ‘thank you’ – good



18
Jul/12

Come And Knock On Our Door


In 1976, Albert Brooks made a short film for Saturday Night Live parodying NBC’s new line-up of shows. One imaginary show was ‘The Three of Us,’ a sit-com about a threesome living together. Two years later, ABC came up with ‘Three’s Company.’ There’s a theory about CGI animation called The Uncanny Valley that hypothesizes that if a representation of a human is not particularly realistic, it can be perceived as a funny parody, but if the representation looks and acts almost, but not perfectly like actual human beings, it causes revulsion.

I think this theory also helps explains why Albert Brooks’ satire of popular culture isn’t more popular.

Any way, there is now a play, 3C, which recognizes, like Albert Brooks before it, that the subject of Three’s Company, and the show itself, is worthy of parody. However the owners of the copyright in Three’s Company don’t see it that way, and hilarity ensues. And without seeing the play, who’s to say otherwise.



17
Jul/12

Initial Interest Confusion Not Applied To Gripe Site (on Motion to Dismiss, no less)


Ron Coleman of Likelihood of Confusion fame successfully represents defendant in dismissing trademark complaint. Defendant, PissedConsumer.com, is a gripe site. Complaints about EXAMPLE are hosted at EXAMPLE.PISSEDCONSUMER.COM. See screenshot above. No likelihood of confusion, even initial interest confusion, because consumers here will not be lured to stop searching by a competing site.

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