C.S.B. Commodities, Inc. v. Urban Trend (HK) Ltd. et al
Plaintiff: C.S.B. Commodities, Inc.
Defendant: Urban Trend (HK) Ltd. and Robert Kushner
Case Number: 1:2008cv01548
Filed: March 17, 2008
Court: Illinois Northern District Court
Coach Services, Inc. v. Glo International, Inc. et al
Plaintiff: Coach Services, Inc.
Defendant: Glo International, Inc., Brian Bang and DOES
Case Number: 2:2008cv01793
Filed: March 17, 2008
Court: California Central District Court
CINDER BLOCK, INC. v. VARIOUS JOHN DOES et al
Plaintiff: CINDER BLOCK, INC.
Defendant: VARIOUS JOHN DOES, VARIOUS JANE DOES and XYZ COMPANY
Case Number: 5:2008cv01293
Filed: March 17, 2008
Court: Pennsylvania Eastern District Court
Amerispec, Inc. v. Threatt
Plaintiff: Amerispec, Inc.
Defendant: Jimmy E. Theatt
Case Number: 2:2008cv02174
Filed: March 17, 2008
Court: Tennessee Western District Cour
I’d Going To Use One Of Those Hotels.Com Services
TTAB decision holding HOTELS.COM to be generic.
Example Of In Rem Domain Name Complaint
Example of cybersquatting complaint under in rem provision of ACPA arguing that Verisign is located in Massachusetts because it’s registered to do business in Massachusetts.
What Can Brown Do To You?
UPS, owner of, inter alia, registration in “What Can Brown Do For You?”, sues lawyer named Brown who used ‘See What Brown Can Do For You” and “See What Brown Can Find For You.”
Recently Filed Trademark Lawsuits
Weight Watchers International, Inc. v. Cooper
Plaintiff: Weight Watchers International, Inc.
Defendant: Rebecca Cooper
Case Number: 1:2008cv02761
Filed: March 14, 2008
Court: New York Southern District Court
The Rowen Group, Inc. v. Educational Insights, Inc.
Plaintiff: The Rowen Group, Inc.
Defendant: Educational Insights, Inc.
Case Number: 2:2008cv01752
Filed: March 14, 2008
Court: California Central District Court
Secalt S.A. et al v. Wuxi Shenxi Construction Machinery Company, Ltd.
Plaintiffs: Secalt S.A. and Tractel, Inc.
Defendants: Wuxi Shenxi Construction Machinery Company, Ltd.
Case Number: 2:2008cv00336
Filed: March 14, 2008
Court: Nevada District Court
Oakley, Inc. v. Weyco Group, Inc.
Plaintiff: Oakley, Inc.
Defendant: Weyco Group, Inc.
Case Number: 3:2008cv00480
Filed: March 14, 2008
Court: California Southern District Court
North Point Capital Partners, LLC v. Asset Recovery & Recycling, Inc.
Plaintiff: North Point Capital Partners, LLC
Defendant: Asset Recovery & Recycling, Inc.
Case Number: 0:2008cv00695
Filed: March 14, 2008
Court: Minnesota District Court
Niche Media Holdings, LLC v. Niche Downtown, LLC et al
Plaintiff: Niche Media Holdings, LLC
Defendant: Niche Downtown, LLC and Joseph A. Gazzola
Case Number: 2:2008cv00344
Filed: March 14, 2008
Court: Nevada District Court
Monster Cable Products, Inc. v. Monster Sound, LLC et al
Plaintiff: Monster Cable Products, Inc.
Defendant: Monster Sound, LLC, Joel Leonardo Ortega and Jose Luis Ortega, Jr.
Case Number: 2:2008cv00108
Filed: March 14, 2008
Court: Texas Eastern District Court
Vulcan Golf Will Play Through Domain Name Case
A motion to dismiss has been decided in the Vulcan Golf class action against various PPC companies including Google. RICO charges and some torts out – cybersquattign stays in.
<!– document.write('’); –>
The URL Is So Dead In Japan And What That Could Mean

Cabel.name: Japan” “URL’s Are Totally Out”, wherein the author notes a trend in Japanese advertising to encourage viewers to type in a certain term into a search box instead of navigating via a URL.
It makes sense, right? All the good domain names are gone. Getting people to a specific page in a big site is difficult (who’s going to write down anything after the first slash?). And, most tellingly, I see increasingly more users already inadvertently put complete domain names like “gmail” and “netflix” into the Search box of their browsers out of habit — and it doesn’t even register that Google pops up and they have to click to get to their destination.
The author concludes that in the future, the url window and embedded search window will trade sizes to look like this:

I think that this if this is in fact the trend in Japan then it is very important for trademark owners. When I ponder things like the PPC industry, and domain tasting, and front-running, and a seemingly endless parade of sunrise periods, and an endless stream of emails from the Intellectual Property Consitutency of ICANNs seeking written comments about the latest outrage, I am left with the conclusion:
The domain name system is damage and the trademark community should route around it.
I think that educating the audience to use search engine terms rather than URLs is a step in that direction.
Thanks to Cabel for spotting this.
This Is Google’s Mall – We Just Rent Space In It
NY Times: A New Tool From Google Alarms Site:
Retailers and publishers have fought hard to work their way up in the ranking of Google’s search results and refine the search features of their own Web sites to help users once they arrive. Now, Google is taking a greater role in helping users search within particular sites. And some of the same retailers and publishers are not happy about it.
Alan Rimm-Kaufman, an Internet consultant, said Google might be asked at times to turn off a new feature. This month, the company introduced a search-within-search feature that lets users stay on Google to find pages on popular sites like those of The Washington Post, Wikipedia, The New York Times, Wal-Mart and others. The search box appears when someone enters the name of certain Web addresses or company names — say, “Best Buy” — rather than entering a request like “cellphones.”
Will The Lucky Case Game Be Lucky In Court?

American’s sweetheart advertising lawyer, Myka Todman, notes the class action against the show “Deal Or No Deal” and, as luck is the residue of good legal advice, advises us as follows:
The state Supreme Court in Georgia is hearing a class action law suit against NBC Universal and the producers of the hit show “Deal or No Deal” based on its Lucky Case Game. Before you rush to the show’s official web site, the Lucky Case Game is “taking a short break”. In case you haven’t seen the show, the Lucky Case Game was an interactive text message promotion allowing viewers a chance to play and potentially win a prize during each broadcast. The viewers could participate in the promotion, either via the Internet or text message, by watching, selecting one of six gold cases, and submitting the number of the winning case. According to the research analyst at Bestuscasinos.org/real-money/, it would appear that the suit alleges that the Lucky Game constitutes illegal gambling because even though viewers were invited to participate online for free, entrants who played via text message were charged a premium fee of 99 cents to enter.
In light of this suit and others which are currently pending, it seems like a good time to briefly review some promotion basics so as to avoid conducting an illegal lottery.
1. Federal and state laws prohibit lotteries unless they are state run. To avoid violating the illegal lottery laws, one of the following elements must be removed from your promotion: chance, consideration or prize.
2. Are you conducting a sweepstakes (game of chance) or a contest (game of skill)? Decide and stick to it. Sweepstakes must be primarily based on chance, as opposed to contests where the outcome must be predominately related to some measurable form of skill. When running a skill contest, do not inject chance into the promotion by picking the winner out of a hat in the event of tie.
3. The “Official Rules” govern a promotion from start to finish and considered a legally binding contract between the sponsor and the entrants. Remember that the rules must contain certain disclosures (e.g., eligibility requirements, odds of winning, number/value of prize(s), deadlines, limitations of liability). Draft the rules carefully, considering all factors, as they cannot be changed midway through the promotion. Because this is a contract between the sponsor of the promotion and the entrant, the Official Rules cannot be amended unilaterally once the promotion has commenced.
4. Limit eligibility to the United States or ensure that you have competent legal counsel familiar with international laws to avoid violating the consumer protection and promotion laws of all countries. In addition, don’t overlook the fact that each state has its own promotion law regime with which you must comply. Tread lightly.
5. What do you want from the promotion? Do you want the right to use all entries (e.g., photos, essays, videos) and how (e.g., print ads, online, in future campaigns)? Will you be returning the entries? Might you want the finalist(s)/winner(s) to participate in interviews related to your brand and/or the promotion? Draft these rights into the rules so that the entrant is on notice and tie acceptance of the prize to the granting of rights so that it is all dealt with ahead of time.
6. Advertise your promotion with caution and make as many disclosures as possible. The rules and regulations vary depending on the type of advertisement (e.g., print, radio, TV, Internet) but all should contain some form of abbreviated rules. For example, the start and/or end dates, eligibility requirements, odds of winning and sponsor name and address should be listed. As with everything else, all ad copy should be reviewed by legal counsel.
7. Consumer generated content is hot. Inviting consumers to create content is a big draw and makes the consumer feel closer to the brand. That said, you have no control over the submission and may be held responsible for its content. There are ways around this – drafting the rules so that no infringing materials may be used (e.g., no music), screening all submissions, disqualifying all submissions containing content not original to the entrant, providing entrants with a toolbox of content for use in the submissions – but no matter what safeguards you put in place, if you plan to place the submissions on, for example, your web site, you should expect some additional headaches along the way. See Doctor’s Associates, Inc. v. QIP Holders, LLC, 2007 U.S. Dist. LEXIS 28811 (D. Conn. April 19, 2007).
8. Plan ahead. Keep in mind that there are many moving parts involved in running a sweepstakes or contest and you need time to keep things running smoothly. By way of example, there are some states that have registration and bonding requirements which must be complied with prior to the launch date. Also, remember that once a winner has been selected in a skill contest or game of chance, there is still work to be done – you need time to contact the winner and send out and receive certain documents (e.g., affidavit of eligibility, publicity/liability release) before making any announcements or you may find yourself with an uncooperative winner and no recourse.
9. Include a privacy statement or a link to your policy in the Official Rules. Entrants should be told exactly how their personally identifiable information will be used. Such information must be used in accordance with your guidelines which are legally binding. Bear in mind that if you conduct a promotion geared towards children under the age of 13, the Children’s Online Privacy Protection Act will apply.
10. As mentioned, there is a lot of confusion surrounding entry into a promotion through a text messaging component. Right now, this should probably be avoided at all costs and if not, under no circumstances should you include a premium fee on top of the standard text messaging fee charged by the carrier. Otherwise, you are likely undermining the entire promotion in the process.
Recently Filed Trademark Lawsuits
Illinois Industrial Tool, Inc. et al v. Diamond Visions, Inc. et al
Plaintiffs: Illinois Industrial Tool, Inc. and JMK Sales, Inc.
Defendants: Diamond Visions, Inc. and Robert W. Henzel
Case Number: 1:2008cv01544
Filed: March 14, 2008
Court: Illinois Northern District Court
Hansen Beverage Company v. N2G Distributing Inc et al
Plaintiff: Hansen Beverage Company
Defendant: N2G Distributing Inc and Alpha Performance Labs
Case Number: 5:2008cv00357
Filed: March 14, 2008
Court: California Central District Court
Grotto Pizza Inc. v. Grottino Inc. et al
Plaintiff: Grotto Pizza Inc.
Defendant: Grottino Inc. and Gianluca Arienzo
Case Number: 1:2008cv00151
Filed: March 14, 2008
Court: Delaware District Court
GRACO INC. et al v. PMC GLOBAL, INC. et al
Plaintiffs: GRACO INC. and GRACO MINNESOTA INC.
Defendants: PMC GLOBAL, INC., PMC EUROPE INVESTMENTS, S.L., PMC, INC., DENIS S. COMMETTE, GAMA MACHINERY USA, INC. and GARRAF MAQUINARIA S.A.
Case Number: 3:2008cv01304
Filed: March 14, 2008
Court: New Jersey District Court