27
Sep/12

Trade Dress Infringement of Law Firm Website (EDNY Complaint)


YourLawyer.com alleges infringement of the trade dress of its website, by the website of Gilman Law Firm.

yourlawyer.com trade dress complaint



24
Sep/12

Trademark Lawyers Might Enjoy This




24
Sep/12

DJ Action: VOGUEVERT for luxury goods website v VOGUE Magazine


VOGUE Magazine sent a ‘blank’ complaint (an unsigned unfiled complaint) to VOGUEVERT on Sept. 5 (VOGUEVERT uses the mark for a site selling luxury items. VOGUEVERT files a DJ action on Sept. 21.

voguevert v vogue



24
Sep/12

REGENT UNIVERSITY v GEORGIA REGENTS UNIVERSITY


A Regent is a common name for a member of a governing Board of a public education system. California and NY have Boards of Regents, as does Georgia. In my household, The Regents refer to the standardized test middle and high schoolers have to take in June.

regent v regents



22
Sep/12

CHIPOTLE GRILL v Jack in the Box re CHIPOTLE Sandwich


Chipotles are smoked jalapenos. CHIPOTLE GRILL is a chain (that I think is quite good). Jack in the Box sells a Chipotle Sandwich (which has a CHIPOTLOAD of flavor).

chipotle v chipotle complaint



21
Sep/12

THEREFORE I WILL FILE A TRADEMARK APPLICATION FOR YOU COVERING 'FORTY SEVEN PERCENT' AND VARIANTS THEREOF.


When is a decorative element of a product trademark use, and when is it descriptive fair use? Does the shirt depicted above signify BORN TO ROCK as the source of origin, or is it just one more trite slogan?

Plaintiff owns an incontestable registration for BORN TO ROCK for guitars, and a recent registration for the same mark for shirts. It received an ornamental objection when filing for the shirt application, which it overcame by showing ownership of the guitar registration and non-ornamental use of the mark on guitars. (See TMEP 1202.03)

Cafe Press sells online items bearing user-created designs, which it affixes to items such as shirts and mugs. Third parties (many third parties) sold shirts with variations of the BORN TO ROCK slogan as part of the ornamentation. Plaintiff protested. Cafe Press declined to stop sales. Plaintiff sued. Cafe Press moved for summary judgment, arguing that its use was descriptive fair use.

Held: Based on a record that appeared to contain only depictions of the designs but apparently not screen shots of Cafe Press’ website (see page 14 of the decision), the Court notes that looking at some of the designs “. . . there is no potential source identifier other than the words that constitute BTR’s mark’ and thus ‘ a reasonable juror could conclude that the use of the phrase “Born to Rock” was intended to identify BTR as the source . . .”

Motion for summary judgment denied.

Now, I couldn’t find any BORN TO ROCK shirts on Cafe Press today. I did go to Zazzle and the webpages for its ‘Born to Rock’ shirts, bear the ZAZZLE mark and identify the brand of the shirt and the vendor of the shirt. Also, the decision noted that Cafe Press asked the court to consider all BORN TO ROCK designs. Some designs did bear other sources (such as WhatAreYouApparel.com) in the design itself.

Prof Goldman analysis of the BORN TO ROCK decision here.

An upshot – prospective clients call me every so often in an attempt to get exclusive rights to the hot catchphrase of the day. I imagine that people are trying to sew up the rights to FORTY SEVEN PERCENT even as we speak. I then go into my spiel about ornamental use vs trademark use, and how ownership of the trademark wouldn’t prevent true descriptive use of the phrase. And by the time the registration matures, the phrase won’t be that hot anymore.

I think that there may be some case-specific oddities here with regard to the evidence before the court, but others things being equal, the ‘catch-phrase’ registrations was summary-judgement proof this time around.

cafe press born to rock decision



21
Sep/12

WICKED FITNESS Chain v WICKED FIT TV Show


WICKED FITNESS chain v WICKED FIT reality TV show.

wicked fitness v wicked fit tm complaint



21
Sep/12

VIDYO v VIDYOO for Teleconferencing Services


VIDYO v VIDYOO for teleconferencing services.

vidyo v vidyoo tm complaint



20
Sep/12

The Most Parodied Man In The World


You can discuss one of two questions: (1) Is this parody fair use; or (2) why do things always work out for the Lakers?

Stay viral my friends.



19
Sep/12

Servicemark Counterfeiting: Value Inn by Vantage v Terminated Franchisee


Why are there fewer cases involving counterfeit services as opposed to counterfeit goods? The transaction is shorter in duration for goods, so easier to maintain the deception? Services tend to require a premises, and therefore harder to run a fly-by-night business? Maybe ecommerce will result in a higher level of servicemark counterfeiting.

value inn counterfeit servicemark complaint