If the simultaneous use of different trademarks combine to form an infringing whole, to what extent does an injunction of that combination apply to the individual components (or to, what defendant argues are analogous components)?
Diageo sells CROWN ROYAL whisky in a purple cloth bag. Mexcor began selling TEXAS CROWN CLUB whisky, first without a bag, next in a Texas flag bag, and then a Texas flag bag that had the words TEXAS CROWN CLUB on it. It also branched into ‘local’ brand extensions, such as FLORIDA CROWN CLUB. Diageo sued and prevailed, An injunction issued. Diageo had made a concession that infringement began only when the TEXAS CROWN CLUB bag was used, and thus the two prior stages of use, use without a bag, and use with the ‘unlabeled bag,’ were not infringing.
What are the implications of that concession?
Mexcor now, citing the concession, seeks declaratory relief to peel away from the injunction what it believes are lawful usages inferred by the concession. For example, the concession implies that TEXAS CROWN CLUB in standard characters is non-infringing, therefore FLORIDA CROWN CLUB is non-infringing. Fifth Circuit declines to speculate on such questions that were not directly before the District Court.
“Ok, but does it makes economic sense?”
Happy are those lawyers who don’t need to concern themselves with the economic ramifications of their advice. For everyone else, World Trademark Review is presenting a conference on “Managing the Trademark Asset Lifecycle” in New York, on Thursday October 20, 2016.
The program covers:
– Brand and trademark audits;
– Brand valuation;
– Collateralization of brands;
– Financial and tax considerations of trademarks;
– Monetization (i.e. licensing);
– ‘Exit strategies’ (i.e. what to do with residual goodwill)
The speakers are, on the whole, in-house counsel for some of the most valuable properties in the world. The full speaker list is here.
WTR reached out to me and I will be wearing my ‘working-blogger’ hat and attending and live-tweeting the conference, at WTR’s invitation.
Hope to see you there.
Trademark complaint re LES and LOWER EAST SIDE t-shirts.
Plaintiff owns regs for SATISFY YOUR CRAVING which it places on its frozen meals. Defendant allegedly placed SATISFY YOUR CRAVING on ‘shelf talkers’ – point-of-purchase displays. Plaintiff sued last week, withdrew its complaint yesterday.
John McAfee, founder of McAfee anti-virus fame, contributed or sold various assets to McAfee Associates. He alleges that he did not contribute or sell ‘his personal name’ to the company. The company certainly owned registrations that included the MCAFEE element. McAfee Associates was ultimately sold to Intel. Intel allegedly abandoned the MCAFEE trademark in 2014. John McAfee now wishes to work for a company that will be named John McAfee Global Technologies, which will perform services in the cyber-security field. Intel had protested, alleging that it owns the MCAFEE trademark (paragraph 26 of the complaint is puzzling as it seems to allege that Intel has ceased using the MCAFEE trademark, given Intel’s use of the mark at, for example, www.McAfee.com).
The Joseph Abboud case is a good place to start when contemplating to what extent one may use one’s own name (if one allegedly assigned away the trademark rights).
Former spokesperson for Zoosk sues over trademark JOAN actually for her ‘persona.’
Car-Fresher sells Little Trees car fresheners. Sun Cedar is a Kansas not-for-profit founded to provide jobs for the at-risk population. It sells, among other things, cedar tree-shaped cedar wood ornaments.
The Federal Election Committee prohibits political committees that are not authorized by a candidate, to use that candidate’s name in the titles of their websites and social media pages. a PAC named Pursuing America’s Greatness, challenged the prohibition arguing that the name prohibition was unconstitutional, as it was a content-based restriction.
Held: As a content-based regulation, the prohibition did not consider whether more narrow means could be used to prevent voter confusion, such as disclaimers.
43(b)log notes that this argument possibly be applied to trademark infringement as well.
Alibaba successfully dismisses Gucci’s claim that Alibaba participated in a conspiracy with counterfeiters to sell counterfeit goods on Alibaba. That the merchants may have resulted in an ‘online retail cluster’ that benefited each other from some sort of network effect, did not rise to a ‘hub and spokes’ RICO conspiracy.
Wilson v Perrell: Memo of law in support of motion to dismiss copyright ownership claim. The statute of limitations for copyright infringement is rolling; the statute of limitations for a dispute over copyright ownership is three years.