LovelySkin.com v LivelySkin.com re Presumptions in 2(f) Regs

LovelySkin.com owns registrations for LOVELYSKIN and LOVELYSKIN.COM, which it obtained through a showing of acquired distinctiveness under Section 2(f) of the Lanham Act. It sued LivelySkin.com for infringement (both were ‘cosmeceutical’ retailers). Defendant counterclaims, moving to cancel plaintiff’s registrations. The District Court found no confusion and cancelled the regs. This 8th Circuit decision does a good job walking through the proper analysis for presumptions. Defendant raised questions whether plaintiff had acquired distinctiveness, but not enough to upend the presumption. However, defendant won the war, as the Court affirmed the finding of no confusion. Bonus discussion of whether misaddressed emails are in fact evidence of actual confusion (in this case, no).

lovelyskincom eighh circuit


Must-Read Complaint: Gluco Perfect v Perfect Gluco

gluco perfect

This is a link to the opening ‘da-duh’ clang from Law and Order.

Kevin Mernone ran Gluco Perfect, a successful medical supply company. According to the complaint: He was an alcoholic and going through a divorce. Defendant Francine Freiman worked at the company. While he struggled with his disease, she ‘covertly’ plied him with liquor. She and her co-conspirators, looted the company. They forged checks, embezzled, etc. The established a ‘mirror image’ company, Perfect Gluco, to divert funds. In the last days of his life, while he lay in a coma, she and others stole personal effects of his (they allegedly carried out a safe!). The widow (the divorce was never finalized) and the company now sue to reclaim what was stolen.

OK – sounds like there is indeed a colorable trademark cause but the forged checks and embezzled funds sound criminal as well. I can’t find any references on the Internet to any criminal proceeding.

gluco perfect


Not At Home With This Grange


National Grange organization sues former chapter. History of plaintiff here.

grange v grange


Judge Judy v. a Connecticut PI Lawyer

Judge Judy Sheindlin of TV, who is not related to Judge Shira Sheindlin of the SDNY, sues a Connecticut PI lawyer for running excerpts from her show in his commercials. Judge Judy alleges that, according to a survey, she is one of America’s 100 most trusted people. Maybe he’s a great PI lawyer but you may want to consider other options in seeking counsel for right of publicity claims.

judge judy


Two Bars Named DUTCH KILLS Six Blocks From Each Other In Long Island City

dutch kills bar



Plaintiff operates a successful bar named DUTCH KILLS in the Long Island City section of Queens. Defendant has opened DUTCH KILLS CENTRAAL six blocks away. There is a neighborhood named Dutch Kills in Long Island City. Plaintiff alleges that neither bar is located in it.

dutch kills complaint


Basquiat Estate v Christie’s

basquiat untitled

Plaintiffs are the administrators of the Estate of their brother, the late artist Jean-Michel Basquiat. The Estate owns the trademark ‘BASQUIAT” and the copyrights in his works. It serves as an Authentication Committee to opine on the authenticity of works attributed to him. Christie’s is the famous auction house. A collector put 50 of his alleged Basquiat works up for sale through Christies. He had previously shown 7 such works to the Authentication Committee, which authenticated 6 of them. Christie’s listed the 50 works on its catalog and ran a notice in it:

All artwork by Jean-Michel Basquiat: (c) 2014 the Estate of Jean-Michel Basquiat/ADAGP, Paris/ARS, New York.

The complaint doesn’t specifically say that the 43 unauthenticated items are not authentic. Para. 10 of the complaint says specifically what they say about the authenticity. Para. 11 indicates that the copyright notice is false, because the Estate won’t claim copyright in all of the works because it won’t claim ownership in works that are of ‘questionable authenticity.’ Accordingly, Christie’s claim that the Estate is claiming copyright, is a false statement that deceptively implies that the works are authentic and that the Estate sanctioned the sale.

Christie’s has reportedly suspended the sale.

A sample Basquiat work from Wikipedia here (not intended to suggest that it is part of the suit).

basquiat v christies


I Am Coming For You, Ricky Bobby

Talladega Nights – The Ballad of Ricky Bobby by MyMovies_International

Defendant opens ‘breastaurant’ named ‘Ricky Bobby’s Sports Saloon & Restaurant.’ Hilarity ensues. Extensive discussion of ‘Talledega Nights’ and ‘male-oriented entertainment clubs,’ or ‘breastaurants.’

columbia v ricks cabaret


Heinz v. Melinda re Ketchup Bottle Trade Dress

melinda ketchupheinz-ketchup-24-14-oz-bottles-case
Heinz owns a registration covering a 2d version of a mark depicting its bottle described as:

. . . a two dimensional representation of applicant’s ketchup bottle container and the product labels affixed thereto, which two dimensional representation is itself used as a logo mark on single serve packaging for the applicant’s goods.

It owns a 3d version described as:

. . . a glass bottle, the lower portion of which contains eight hexagon panels which are round on the top and bottom and the upper portion which tapers inward slightly from the top of the panels to the top of the bottle and cap thereto.

Defendant sells MELINDA-brand spicy ketchup, depicted above. I’m not sure why anyone would buy a glass ketchup bottle at this time, when squeezable palstic versions are available. The word KETCHUP is Chinese in origin. That and other fun ketchup facts are found here. Heinz claims that the ketchup will pour faster if you hit it on the ’57′ on the neck. Ketchup is a non-Newtonian liquid.

KETCHUP is acknowledged to be the standard spelling these days (apparently there are regional hold-outs). Heinz Dawid claimed that one time he instructed a foreign associate to file an application covering CATSUP and the associate filed for CAT SOUP.

heinz v melinda trade dress complaint


The Trademark Blog Salutes Michael Jordan For Prevailing on This Motion.

jewel osco ad

Time’s up from yesterday’s post.

Jewel ran the above ad in a commemorative issue of Sports Illustrated, without the authorization of Michael Jordan. MJ sues. MJ concedes that if the ad is held to be non-commercial speech, then his various claims fail. The Court, interestingly, says that it’s not so sure that’s correct (page 10) but that was the concession, so there you go. The question is therefore, is this ad commercial speech (and therefore entitled to a lowel level of First Amendment protections.

Held: Give me a break. Why did Jewel run the ad?

We don’t doubt that Jewel’s tribute was in a certain sense public-spirited. We only recognize the obvious: that jewel had something to gain by conspicuously joining the chorus of congratulations on the much-anticipated occasion of Jordan’s induction into the Basketball Hall of Fame. Jewel’s ad is commercial speech. (p. 20)

Accordingly, motion in favor of defendant was reversed, and the suit returns to the District Court to determine if there is a valid false endorsement claim. That should be an interesting question as well. If you are flipping through a special issue of SI, and every single ad says ‘Congratulations, Mike’ ‘Congratulations, Mike’, etc, do you believe that MJ authorized each ad, or merely that every advertiser paid SI so that they could get some beneficial glow?

Every year I run the same gag on Super Bowl Sunday: in order to avoid a false endorsement claim, rather than suggest that the NFL endorses me, I say “The Super Bowl is the official professional football championship of The Trademark Blog.” I am not deterred by this decision.

jordan v jewel food.pdf


You The Judge – Michael Jordan Ad

jewel osco ad

On today’s segment of ‘You The Judge’, please analyze the claims Michael Jordan may have against Jewel-Osco regarding the ad reproduced above (which ad ran without his authorization). This ad appeared in the inside back cover of a special issue of Sports Illustrated commemorating MJ’s induction into the Hall of Fame. Something you might need to know is that “Just Around The Corner” is the well-known slogan of Jewel-Osco. Also, 23 was MJ’s jersey number (and anyone who picked up that issue of SI would know that).

Tomorrow, I will upload the Seventh Circuit decision.