SDNY: Sick Boy v Chainsmokers re SICK BOY

Sick Boy Clothing, a South Dakota-based apparel company, owns a registration for SICK BOY.  Its website identifies musicians who wear SICK BOY clothing.  The Chainsmokers, a band, released a song entitled “Sick Boy,” and sells some merchandise using the term.


SDNY Lawsuit Over Use of BLOCKCHAIN Trademark – You Read That Right



Plaintiff, Blockchain Luxembourg, owns a federal trademark registration for BLOCKCHAIN and design, disclaiming  the word BLOCKCHAIN.  It provides blockchain-related goods and services, and operates websites at blockchain.com and blockchain.info.

It defines the marks in which it claims rights in this suit in para 24 of the complaint:

So yes, plaintiff disclaimed the word BLOCKCHAIN in its registration, and it is claiming rights in the word BLOCKCHAIN per se in this complaint.  That’s not a show-stopper.  The disclaimer will have some evidentiary weight as to the state of play on the date that the disclaimer was made, but a party can argue that it has acquired secondary meaning in the mark subsequent to that.

Defendant is operating as Blockchain.io.  It allegedly offers identical or related crypto coin goods and services.

I guess you have to read the complaint.


UPDATE: I have been contacted by the Director of Communications of Blockchain.io, who asked me to post the following reply:

Paymium, that has been successfully operating a BTC/EUR exchange since 2013 and serving 170,000 customers, is currently closing its private ICO to accelerate the rollout of Blockchain.io. The public sale for this complementary cryptocurrency exchange service will start on September 27. 

The domain name Blockchain.io was registered by Paymium way back in April 2012 (https://www.whois.com/whois/blockchain.io), and the Blockchain.io project launch was publicly advertised in the press months ago. 3 days before the beginning of the sale, and a few weeks away from the official release of our platform, it thus comes as no surprise that we are challenged by some potential competitors, for obvious reasons. We condemn this approach that surely doesn’t comply with the crypto-community values. 

Moreover, Blockchain.io disputes the accusation of making false and misleading statements. What is at stake is, at first, the protection of our name, our reputation, and our loyal investors and customers. For these reasons, our lawyers will answer point by point the claims that have been made.

As for our ICO, we already provided early investors with the alpha version of our platform that is ready to be launched right after the public sale in November. The name blockchain.io is the legal property of Paymium and the public sale will start as planned on September 27.”


Regus v WeWork re HQ for Office Space Rental and Services (ND Texas)

Office rental company Regus sues office rental company WeWork over use of the mark HQ. Regus has a registration from 1988 for HQ covering office services (i.e. supplying ‘back office’ personnel services to its renters)


After All That, Belmora v Bayer (FLANAX) Dismissed On Statute of Limitations

Bayer sells FLANAX brand pain reliever in Mexico.  Virginia-based Belmora adopted and applied to register the FLANAX mark for pain reliever in 2003, prior to any use or applications in the U.S. by Bayer.  4th Circuit, in the first circuit court case to apply Lexmark to 43(a)(1)(A), held that for purposes of 12(b)(6), Bayer could bring an action if it established that it was in the zone of interests of the Lanham Act (in this case, by indicating that it was injured by the misuse of a trademark in U.S. Commerce, even if it itself did not use its trademark in such commerce), and if defendant’s use injured those interests.

On remand: This was going to be a weird case because not only did Bayer not use FLANAX in U.S. Commerce prior to Belmora, it indicated that it was never going to use FLANAX in such commerce, because it used the ALLEVE name in the U.S. for that particular pain reliever (naproxen sodium).  Accordingly, injury would have to occur in Mexican commerce.

Well, we’re not going to see how that plays.  Bayer learned of Belmora’s application in 2004, its use at approximately same time, and of Belmora’s additional alleged unfair competition (false advertising), not later than 2009.  It didn’t bring a civil suit until 2015.  Using either a two year or four year statute under the Lanham Act and/or California state law, Bayer was untimely.

Disclosure: we represent Belmora up through the Fourth Circuit decision.


Engine Company 3, Ladder Company 12

When we lived in Chelsea, our local firehouse was Engine Co. 3, Ladder Co. 12. They would send firemen to visit our kids’ preschool. When we took the kids in the stroller by the firehouse, the firemen would let the kids climb on the firetrucks.

On 9/11, Engine Co. 3, Ladder Co. 12 lost five men.

Some people run from burning buildings and some people run towards them.


Rebecca Minkoff on Effect of Tariffs on Counterfeits

From NY Times article on proposed tariffs:

Luxury Handbags

“Placing tariffs on products like ours (in particular handbags) that are not at risk for intellectual property theft in manufacturing, and are not related to the China 2025 plan, will only ennoble the bad actors in the Chinese economy who pose a genuine threat to our business via bad faith registrations of our recognized trademarks.”

— Written request to testify from Rebecca Minkoff

Chinese counterfeiting is a huge financial problem for luxury handbag, shoe and other retailers, who collectively lose billions of dollars each year as a result of knockoff versions of their products that are produced in China and sold globally. Companies say the tariffs will simply make their products more expensive to produce and give counterfeiters a bigger leg up in the marketplace.



IPO Amicus in Helsinn Healthcare v. Teva Pharmaceutical re OnSale Bar

Amicus Brief of Intellectual Property Owners Association, in support of neither party, drafted by my colleagues Rob Isackson, Matt Kaufman and Lauren Sabol.


I. Proper Application of the Post-AIA OnSale
Bar Is Critically Important to All
Industries and Fields of Technology

II. The Post-AIA On-Sale Bar Provision Should
Be Interpreted to Exclude Secret Sales

a. Statutory Construction Principles
Confirm That Congress Intended to Exclude Secret Sales from the
On-Sale Bar

b. The Legislative History of the AIA
Confirms That Secret Sales Were
Meant to Be Excluded

III. Excluding Secret Sales Is Consistent
with Congress’ Intent for the AIA to
Harmonize United States Patent Laws
with Other Countries

IV. The Fe der a l C i r c u it D e c i sion Is
Inconsistent with Other Interpretations
of the On-Sale Bar

a. The Federal Circuit’s En Banc
Decision in Medicines Compels a
Result That the Invention Was Not OnSale
in the Present Case

b. The Federal Circuit’s Decision Does
Not Square with Pfaff’s Requirement
That the Invention Be Public to Be
On Sale

c. The USPTO’s Post-AIA View of the
Scope of the On-Sale Bar Excludes
Secret Sales

d. The Concurrence Misapprehends
IPO’s Medicines Argument



How A Trademark Lawyer Sees The Chelsea-Arsenal Pre-Game Show

credit: DB Schwimmer


I’m Not Saying Defendant’s A Gold Digger: Seeking Arrangement Sues RichMeetBeautiuful

Reflex Media operates online dating websites such as SEEKING ARRANGEMENT.  Seeking Arrangement uses the term ‘Sugar Daddies’ to describe its target customers.  Its taglines RELATIONSHIPS ON YOUR TERMS and MUTUALLY BENEFICIAL RELATIONSHIPS are part of its coy branding.

Defendant RichMeetBeautiful (hmmm, a little too-on-the-nose) allegedly used plaintiff’s taglines, but also copied various profile descriptions.


Ninth Circuit: Stevens v Corelogic – Defendant’s Intent re Removal of (C) Management Info

Justia opinion summary:

The Ninth Circuit affirmed the district court’s grant of summary judgment for CoreLogic in an action brought under the Digital Millennium Copyright Act. Plaintiffs, professional real estate photographers, alleged that CoreLogic removed copyright management information from their photographs and distributed their photographs with the copyright management information removed, in violation of 17 U.S.C. 1202(b)(1)–(3).

The panel held that section 1202(b) requires an affirmative showing that the defendant knew the prohibited act would induce, enable, facilitate, or conceal infringement.

In this case, plaintiffs failed to make the required affirmative showing because they failed to produce evidence showing that CoreLogic knew its software carried even a substantial risk of inducing, enabling, facilitating, or concealing infringement, let alone a pattern or probability of such a connection to infringement.

The panel affirmed the district court’s denial of plaintiffs’ discovery request and the award of fees.