Owner of BEANITOS mark for bean tortilla chips brings a Declaratory Judgment action against owner of BEARITOS mark for tortilla chips. Owner of BEARITOS brought a TTAB proceeding (which isn’t sufficient to warrant a DJ), but its representative allegedly protested plaintiff’s use during a conversation. If litigated, this case would re-visit the question in the 800-Flowers/Edible Arrangements case, namely: when do ‘threatening’ statements made by trademark owner’s counsel rise above the DJ standard and create a reasonable apprehension of a lawsuit in the ‘mind’ of defendant/DJ plaintiff?

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Exxon sues Fox over Fox’ new FXX Network logo. The complaint speaks for itself. Note, however, that likelihood of being reminded of something is not the same thing as likelihood of being confused. Of course, there are those who believe that likelihood of being reminded of something is likelihood of dilution.

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JibJab specializes in ‘photo cut-out animation.’ It’s best known for its ‘This Land Is Your Land’ parody (above). There seems to have been at least three instances where it has protested local Hyundai dealerships’ use of JibJab-style animation for Hyundai commercials. They allege copyright infringement but also infringement in the mark JIBJAB (see exhibit 1) of the complaint.

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Interesting fact pattern. KT Tape is the brightly colored tape you see on athletes. Both photos above are from its snazzy website. LT alleges that it determined that a batch of its product was below its quality standard. It contracted with defendant, Mr. Dumpster (that name again is Mr. Dumpster) to dispose of the product (for $435). Instead, Mr. Dumpster sold the tape (allegedly representing that the product was first quality).

So here we have the trademark owner affixing the mark to the goods but this dumpster-quality batch was (allegedly) materially different than an authorized batch, and thus actionable ‘gray goods.’

Also, there’s the $435 breach of contract action.

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This lawsuit is getting national news coverage. As a trademark case, if plaintiff’s allegations are correct, this sounds pretty cut and dry. Plaintiff is the DELTA ZETA sorority, and alleges ownership of the DELTA ZETA trademark for among other things, sorority services. Defendants allegedly maintained a rental establishment near a college, under the name DELTA ZETA HOUSE. It allegedly used DELTA ZETA trademarks to suggest a connection with the sorority, and somehow giving the impression that agreeing to rent in the house was somehow part of pledging to the sorority.

Interesting domain name side note: Defendant allegedly said to plaintiff pre-filing, that unless plaintiff paid defendant $1000, defendant would sell the name, probably to someone in China. Plaintiff sued, defendant alleges that it de-registered the name, and now deltazetahouse.com shows Chinese text. As of 2 pm EST today, whois doesn’t show a newly created registration (but there are time lags in whois updates). Also, the file of the ‘new’ website is “Delta Nu Sorority,’ a name that defendant had indicated that it would use. So there may not have been an arms-length transfer of control.

There are two separate issues – one is defendant’s liability if it did in fact de-register the name without receiving compensation. The other is: what steps a potential plaintiff can take, if faced with a threat that the potential defendant will transfer or de-register the name. One thought occurs: file under seal, and immediately obtain what’s referred to as a registration certificate from the registrar. The certificate ‘represents’ control of the domain name, and is then deposited with the court.

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It’s somewhat unsettling that someone could go into a NEW YORK PIZZERIA in Kuwait or Bahrain or Oklahoma, and think that what they were having was a fair representation of New York pizza. Maybe there should be a NY Pizza trade association, managing a certification mark. Also maybe an Original John’s pizza trade association certifying that you are in fact an Original John. Also maybe a YOU’VE TRIED ALL THE REST, NOW TRY THE BEST trade association to certify that you are in fact, the best.

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Groeneveld v Lubecore: Plaintiff wins $1.25M at trial, alleging trade dress infringment of its grease pump, pictured on the left above.

6th Cir: Reversed. In a trade dress case in which defendant is alleging utilitarian functionality of the trade dress as a defense, the proper question is not whether defendant could have used alternative designs, or whether it needed that design to compete. The proper question, under TrafFix, is whether the design is needed for the product’s use or purpose.

In this case, the grease pumps look the way they do in order to be grease pumps. The base hides the mechanisms, the plastic allows you to see how much grease is left, the volume is determined by how much grease is needed and so on.

Also, no one would buy one, thinking it was the other.

43(b)log discussion of Lubecore here.

Vince Palladino’s article on trade dress after Traffix here.

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