Text of Oral Argument in Star Athletica v. Varsity Brand

News coverage here.

Background here.


You Wouldn’t Understand, It’s a [your name here] Thing

sexy tm attorneyTrademark-Paralegal--Job-Title-Navy-Blue-frontIts-A-SIEMENS-thing-you-wouldnt-understand-welch thing

Here’s an interesting fact pattern. SunFrog.com is a custom t-shirt shop. You enter terms and the term is displayed on common designs. These designs are apparently created by the SubnFrog community of artists. I played with a bunch of search terms and it appears that a determination is made as to what category a particular term belongs to (profession, team name, first names, surnames) so that the customization makes grammatical and/or semantic sense (for so different terms generate possible designs. Examples above.

SunFrog has provided a guide to trademark and copyright for its users here.

Siemens has now sued SunFrog (see example above of shirt generated by using SIEMENS as a search term).


Text of Decision Tranferring Copyright Class Action Against Spotify to SDNY

jaco pastorius

Jaco Pastorius was a bassist for, among others, Weather Report (‘Birdland’ was their biggest hit). He died way too soon at the age of 36. His rights holding company is one of the named plaintiffs in this copyright class action against Spotify. The Central District of California grants Spotiy’s motion to transfer venue to the SDNY.


‘Managing The Trademark Asset Lifecycle’ is this Thursday in New York

wtr managing lifecycle 2016

I will be attending World Trademark Review’s 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 full program is here.

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.


Dilution Claim Dismissed Against NBC/Biggest Loser re Use of LB Logo

Go to page 7 of the decision and you will see allegations of fame that are insufficient to state a claim of dilution at the Motion to Dismiss stage.


The ‘BACK’ in the .FEEDBACK TLD Refers To The Trademark Owner

TLS is the registry behind the .FEEDBACK top level domain.

The CEO of TS has stated that .FEEDBACK is UDRP-proof, because, as I understand the claim, criticism is a good faith use under the second prong of the UDRP.

The CEO backed up that claim by promising that TLS will pay up to $5k in lawyers fees to defend against UDRPs.

Additionally, the CEO of TLS had previously stated:

“No trademark infringement will occur though, the sites are all geared towards free speech and giving reviews. Confusing the public that the brand is running the site will not happen, each site has a disclaimer and makes it clear the brand is not running the site.”

Two observations on the trademark infringement point. TLS itself registered FOX.FEEDBACK as a demonstration. There is a disclaimer in mousetype. (1) If you Google ‘Fox feedback’ as a search term then the first hit looks like this:

FOX feedback
The Fox Broadcasting Company, is an American commercial broadcast television network that is owned by the Fox Entertainment Group division of 21st Century …

So people searching on Google could think that this is official.

(2) Also, the six most recent reviews, as of today, are all addressed directly to Fox (as in, “Geraldo Rivera is a cancer on your show”).

So the users erroneously think that Fox maintains the site.

As for being UDRP-proof:

A recent UDRP decision, written by friend of the blog, Warwick Rothnie, granted a complaint bought by DeBeers, which established that DEBEERS.FEEDBACK had been registered in bad faith. The website appeared to have had no original content, but had copied existing reviews from Yelp after receiving a demand letter from DeBeers.

The CEO of TLS has now tempered his ‘UDRP-proof’ remark, indicating that the use of a proxy service appears to have been a material fact in the result.

One thought occurs: .FEEDBACK is semantically different from, for example, .SUCKS or .REVIEWS or .CHAT in communicating a relationship to a source, in that the .SUCKS element in MICROSOFT.SUCKS would appear to suggest the opposite of origin (why would Microsoft sponsor such a site?) and .REVIEWS and .CHAT would be, for the most part, neutral in that regard.

In contrast, however, generally speaking, because you communicate feedback to the source, there is a greater likelihood that a .FEEDBACK TLD will be associated with the trademark owner. I think that’s what the ‘back’ in ‘feedback’ means.

This TLD can be used lawfully in many, if not most instances, especially if the unofficial nature of the site is PROMINENT SO THAT YOU CAN’T MISS IT.

But the .FEEDBACK TLD is not UDRP-proof and not trademark infringement-proof.



We need Men In Blazers to sort this one out. Allegations that employee of NYC bar stole FOOTBALL FACTORY trademark.


2d Cir: Brown v Winfrey re OWN YOUR POWER

oprah harpo own your power

Blogged previously here and here.

Plaintiff fails to establish protectability of OWN YOUR POWER, and likelihood of confusion arising from Oprah’s use on magazine cover and other usages.


SDNY: LVL XIII v LV re Metal toe plates

107 page decision by Engelmeyer, J.

Plaintiff targets its LVL XIII (Level 13) sneaker at the luxury ($500) market. The sneaker has a metal toe plate with LVL XIII engraved on it:


Plaintiff’s sneaker got some traction: a few celebrities were seen in a few pairs. 8 months after the introduction, LV comes out with the OTR (On The Road) luxury sneaker:

LV OTR sneaker

PLaintiff therefore has to establish secondary meaning in the toe plate as existing by the 8 month point. Very lengthy discussion as to how to not establish secondary meaning. Not high $$ sales, not much unsolicited media coverage, some evidence that existed after the 8 month point (and therefore irrelevant to the analysis). Plaintiff forewent a conventional secondary meaning survey in favor of a law professor whose testimony got tossed under Daubert.

Plaintiff argued that LV’s alleged copying was evidence of secondary meaning. McCarthy’s has one of the more succinct discussions as to why this argument is not always logically sound (defendant might have adopted the element precisely because it thought the element didn’t indicate source). Here, plaintiff couldn’t prove that LV had prior knowledge or that it copied plaintiff. LV’s designer testified that he was inspired by this photo of James Dean wearing Converse Jack Purcells:

james dean wearing jack purcells

LV’s designer replaced the toe ‘smile’ of the Jack Purcells with a metal toe clip because, apparently, metal detailing is in. Also, legal told him to stay away from the Purcells.

So Plaintiff fails in establishing that it has secondary meaning in the toe cap, so that is the end of the case but the court does a full Polaroid analysis any way. Weak mark, evidence of third-party use of two plates, the toe plates don’t look that much like each other (LVL XII’s toe plate has a LVL XII on it) no evidence of actual confusion, no bad faith, people who pay $500 for sneakers are careful as to brand – LV wins ‘lopsidely.’

LV brings counterclaim that plaintiff’s LVL XIII mark is confusingly similar to the LV mark. Dismissed.


Patchogue’s LIVE AFTER FIVE v Farmingdale’s LIVE AT FIVE

AA5 ARTS STAGE POSTER farmingdale live after five

Patchogue is about thirty minutes from Farmingdale on Long Island. Patchogue’s festivals are ALIVE AFTER FIVE and Farmingdale’s festivals are ALIVE AT FIVE.