Trademark Blog » Trademark Fair Use

BIGGEST LOSER v BIGGEST LOSER

Marty Schwimmer — Mon, 24 Oct 2011 14:51:00 +0000

Plaintiff owns incontestable rights in THE BIGGEST LOSER. Defendant fitness club allegedly used the term in promoting its services.

Complaint Biggest Loser

Mix-in's as Grey Goods: Identifying Third-party Ingredients By Brand Names

Marty Schwimmer — Fri, 23 Jul 2010 22:00:00 +0000

Defendant bakery identifies branded cookies and candies as toppings for its cakes. Plaintiff See’s Candies alleges that defendant’s ‘manufacture, storage, sales and storage’ processes don’t meet See’s standards, therefore the See’s candies offered are materially different and therefore infringing.
Complaint Sees Aunt Joy

My Huffington Post Column On The WHO DAT Dispute

Marty Schwimmer — Fri, 05 Feb 2010 21:14:25 +0000

Trademark Nation: Who Dat Who Own Who Dat?

Statutory Defense re BIG BOY? (Rimshot)

Marty Schwimmer — Tue, 06 Oct 2009 19:04:46 +0000

Charleston, West Virginia, was the home of Alex Schoenbaum, founder of the SHONEY’s chain, which had been a BIG BOY franchisee. Charleston put up a statue honering ‘Shoney’ with Big Boy on the top. Big Boy International reportedly protested on trademark grounds. This article quotes me to the extent that if the statue was put up by the town to honor one of its citizens, then it’s likely not use of a trademark in commerce.
Law school fact pattern: What if the community put up the statue on public land across the street from a Shoney’s? And Shoney’s contributed the money to pay for the statue? And contributed the land?
Also: consider if the statue of a (possibly copyrighted) work was commissioned by the town? Or if purchased on the secondary market for Big Boy staues (which apparently exists).

Philadelphia Eagles Sue Radio Station For Ticket Giveaways

Marty Schwimmer — Fri, 02 Oct 2009 06:34:31 +0000

Radio station gives away Philadelphia Eagles tickets and mentions Eagles in on-air promotions, without authorization. It had also promised Eagles once before not to do this sort of thing. Eagles sue enforcing clauses on back of ticket contract, and on trademark.
Complaint Eagles

MACY'S AND CLINTON KELLY MAKE OVER AMERICA v MAKE OVER AMERICA

Marty Schwimmer — Mon, 21 Sep 2009 20:44:23 +0000

Macy’s uses MACY’S AND CLINTON KELLY MAKE OVER AMERICA receive demand letter from owner of registrations for various MAKE OVER marks; files declaratory judgment action.
Consider this case:B & L Sales Associates v H. Daroff & Sons, 421 F.2d 352 (2d Cir 1970) (registered trademark COME ON STRONG v use of COME ON STRONG in ad copy).
Complaint Macy Makeover

Weight Watchers Sues Nestle Over Use of Points

Marty Schwimmer — Thu, 17 Sep 2009 04:50:40 +0000

Weight Watchers sues Nestle for displaying Weight Watchers ‘Points’ on Nestle products. WW has previously sued Campbell Soup and Tesco on similar theories (background of Campbell suit here and Tesco here) but reportedly settled both matters.
Complaint WW Points

Major League Baseball v Donruss

Marty Schwimmer — Thu, 22 Jan 2009 01:11:26 +0000

Major League Baseball Properties sues former licensee Don Russ for use of various MLB properties.
Complaint MLB Don Russ Baseball

Publish at Scribd or explore others: trademark don russ m

The Return of Societe Comptoir De L'Industrie v Alexander's Dep't Store?

Marty Schwimmer — Sun, 21 Dec 2008 04:22:34 +0000

The interest of the consumer here in competitive prices of garments using Dior designs without deception as to origin, is at least as great as the interest of plaintiffs in monopolizing the name.

If we are in fact entering the era of New Frugality, will it affect our trademark jurisprudence? In Societe Comptoir, a 1962 Second Circuit case, Alexander’s Department store sold what today would be refered to as Dior Knock-offs. From the case:

The merchandise was so described in newspaper advertisements, on hang tags attached to the garments reading, ‘Original by Christian Dior– Alexander’s Exclusive– Paris– Adaptation’”

The Court held for Alexander’s, holding that there was no confusion, as it was clearly labeled that this were copies of Dior, and not Dior originals.
I’m not sure I could prove it definitively, but I would venture that over the past ten years, the majority of circuit courts would not hold for defendant on those facts.
But I wonder if an extended economic downturn will make courts more receptive to the viewpoint in the lead-off sentence?

WSJ On Use Of Another's Trademark

Marty Schwimmer — Mon, 15 Dec 2008 17:23:37 +0000

WSJ: Gild By Association (discussion of various forms of marketing involving a third party’s trademark such as ambush marketing, comparative advertising and parody).