Third Circuit decision:  Established retail chain has opportunity to purchase huge shipment of GUCCI bags from a reputable distributor.  However, something made the retailer suspicious whether the bags wer genuine (the distributor told the retailer that the bags were diverted goods, that is to say, grey goods) so it investigated in two ways.  Without identifying why, an employee shows a bag to a clerk in a Gucci outlet, who thinks that the bag is genuine.  Second, it submitted a damaged bag to Gucci’s repair service, which repaired the bag without comment.  Confident now in their authenticity, the retailer puts the bags on sale.  The bags turn out to be counterfeit.

In the resulting suit by Gucci, the retailer is treated as an innocent infringer.  Question: if it is in fact an innocent infringer, why did it use covert means of determining authenticity?  Why did it not approach a Gucci employee who was specifically trained to identify counterfeits?  Was it reasonable in believing that showing the bag to a clerk in a outlet store was a reliable method of determining authenticity?

Gucci v. Daffy’s, No. 02-4046 (Third Circuit December 29, 2003).

The most popular searches for brands in ’03, according to Google:

Popular Brands
2003

     1. ferrari

     2. sony

     3. bmw

     4. disney

     5. ryanair

     6. hp

     7. dell

     8. easyjet

     9. last minute

   10. walmart

More ’03 Google highlights, including most popular fictional character and movie searches here.

There are several companies which operate trademark ‘registries’ or ‘directories.’  They scour various government trademark publications and then send invoices to the applicants.  These so-called directories tend to be located in exotic locations like Vaduz, Liechtenstein.  A recent offering uses an acronym which is similar but not identical to CPA, the reputable trademark and patent renewal firm, which operates out of Jersey (the European Jersey).

I will not use terms such as ‘fraud,’ ‘scam’ or ‘rip-off’ to describe these solicitations as I will not opine on the legality of these solicitations, however imho, these directories ARE OF NO VALUE WHATSOEVER.  If you have filed a trademark application, and you are represented by an attorney (who is the proper agent for correspondence), then do not be fooled by invoices that are sent directly to you.

Artist’s subject is the Barbie Doll (such as the photo depicting Barbie in a blender).  Mattel sues under trademark, copyright, trade dress, etc.  Ninth Circuit ruled against Mattel on everything in this must-read decision.

Aside: Half of defendant’s revenues appear to come from sham purchases from Mattel’s investigators.

Mattel v. Walking Mountain Productions et. al., 01-56695, 01-57193 (9th Cir.  Dec. 29, 2003).

 

In this important decision, 1-800-Contacts v. WhenU and Vision Direct, the Southern District of New York, unlike previous courts, has enjoined WhenU’s use of pop-up/under ads.

Aside: When Wells-Fargo sued WhenU (and lost) it was stung by the fact that a related company of Wells-Fargo allegedly used the WhenU service.  Here, it appears that one of defendants, Vision Direct, had itself sued WhenU, apparently for including its own URL in WhenU’s directory.