Fed Cir: Adizero v Add a Zero. 2 Sales In-state To Out of State Resident Constitutes Use in Commerce

Illinois Church sold, Illinois, two hats bearing mark to Wisconsin resident.

Held: The two sales satisfies use in commerce. There is no de minimus standard, and of no moment that the out-of-state resident was in state when the purchase took place.


2d Cir: Is COLLECTIVE Descriptive for Data Analytic Software?

Cross Commerce Media v. Collective Inc., 15-782 (2d Cir Nov 7, 2016)

Is the mark COLLECTIVE descriptive of ‘data-driven analytics software that helps business select effective marketing opportunities on multiple electronic platforms’

Discussion begins on page 11.

Meat of discussion on page 14.

How PTO practice affects the analysis on page 17.

How third party use affects the analysis on page 18.


Heartland (Splenda) v Dunkin Donuts


Dunkin Donuts no longer carries SPLENDA-brand Sucralose, but carries a “Chinese” sucralose, also in yellow packets (imprinted with the DUNKIN DONUTS logo). Allegedly, customers were told that the sweetener in yellow packets was Splenda. When a customer asks for SPLENDA in their coffee, is that a ‘sale’ or is this alleged ‘post-sale confusion’?

According to legend, sucralose was discovered when a lab researcher ingested it by accident (para 14).

Note use of SPLENDA on this page from Dunkin’s site.


Hyundai Files Grey Goods Suit in D Nevada

Hyundai sues non-US companies importing Hyundai-brand parts, alleging that the parts are materially different from parts intended for the US market due to physical differences and warranty differences. Physical differences are discussed in paragraphs 25 and 36 to 42. Warranty differences are discussed in paras 32, 33,44 and 45.


Text of 8th Cir decision in Warner Bros v X One X (A.V.E.L.A.) re Use of Movie Stills

AVELA, which specializes in merchandising public domain imagery, obtained publicity stills and the like, from classic movies such as ‘Gone With The Wind’ and ‘The Wizard of Oz.’ These materials were published without copyright notice, which, under the old Copyright Act of 1909, would strip those materials of protection (while the underlying works such as the movies, would remain protected). AVELA argued that these materials allowed them to merchandise depictions of the materials on any product. The 8th Circuit had previously rejected this argument.

Hollywood Reporter coverage here.

Law360 Coverage.


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.