Trademark Law
Las Vegas Trademark Attorney 
Covers a wide variety of trademark issues, especially in Las Vegas and the 9th Circuit.
Post Frequency: 0.9/day Last Entry: November 19, 2009 at 19:45:00 Recent Entries: 287
By Ryan Gile
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Planet Hollywood Resort & Casino Gets TRO Against Domain Name
Posted on November 19, 2009(Photo credit: Freelasvegasphotos.com)Another week, another Las Vegas resort and casino cybersquatting case.This week, it is OpBiz, LLC (?OpBiz?) ? the owner of the Planet Hollywood Resort & Casino in Las Vegas ? going after Unister GmbH (?Unister?), an company whose domicile is unknown but believed to be in Germany...
Cybersquatting or Domain Name Hijacking? You be the judge.
Posted on November 10, 2009New York-New York Hotel & CasinoOn November 6, 2009, New York-New York Hotel & Casino, LLC (?NY-NY?), the company which owns the New York New York Hotel & Casino in Las Vegsa, brought a lawsuit in Nevada District Court against California resident Ronnie Katzin, the owner of the domain name newyorknewyork...
Two more high profile trademark infringement lawsuits end with confidential settlements
Posted on November 07, 2009McDonald?s reached a confidential settlement with the Lion's Tap ? an Eden Prarie, Minnesota restaurant which claimed trademark rights to the mark WHO?S YOUR PATTY in connection with restaurant services (registration application applied for on August 25, 2009) ? over McDonald?s Angus burger marketing campaign which used WHO?S YOUR PATTY as a tagline (see billboard below)...
Weekly Wrapup of Nevada District Court Trademark Lawsuits
Posted on October 31, 2009It was a busy week for trademark related lawsuit filings in the U.S. District Court for the District of Nevada (and not a single one of them filed by me).Price Products, LLC v. Juvenile Solutions, Inc., Case No. 09-cv-02067 (D. Nev. October 27, 2009) (Complaint)...
Nevada District Court dismisses some of Texas Domainer?s counterclaims against World Market Center
Posted on October 16, 2009In a case that pits the World Market Center against Texas? most notorious domainer, Texas International Property Associates (?TIPA?), the Nevada District Court granted World Market Center Motion to Dismiss (with leave to amend) several counterclaims that sought cancellation of some of World Market?s Center registered trademarks listed in its complaint that did not form the basis of its trademark infringement and cybersquatting claims against TIPA...
Local Las Vegas companies in a trademark feud over ?Appliance Doctor?
Posted on October 08, 2009The Las Vegas Sun ran a story today (link here) about a dispute between two appliance repair businesses in the Las Vegas valley using the name ?Appliance Doctor? to identify their businesses. Samuel and Mary Gravino, the owners of Applicance Doctor LLC, filed a lawsuit on Tuesday in Clark County District Court against a company operating as ?The Appliance Doctor of Las Vegas? owned by Ken and Melissa Jagmin...
Nevada District Court rules that ?The Rat Pack? is Generic in connection with ?Rat Pack? tribute shows
Posted on October 01, 2009I previously posted (link here) about the trademark infringement lawsuit brought by TRP Entertainment, LLC (?TRP?) ? the production company behind the ?Rat Pack? tribute show ?The Rat Pack is Back? playing at the Plaza Hotel and Casino in Downtown Las Vegas and which owns the registered trademark for THE RAT PACK IS BACK ? against BC Entertainment, Inc...
Potential Buyer of ?Crazy Horse Too? Strip Club Wants ?Crazy Horse 3? To Change Its Name
Posted on September 25, 2009How many times has a client wanted to buy a strip club that was seized by the federal government as part of a racketeering and tax evasion investigation into the club?s owner -- Rick Rizzolo, who had reputed ties to organized crime families -- but was worried that the ?reputation and goodwill? (those in Las Vegas will understand why I put those words in quotes) of the club would be diluted by another strip club that opened up in the meantime by a third party using a similar mark to identify its strip club? (I know, another one of those cases)...
Fish & Richardson Files Foreclosure Action to Let the World Know ?Who?s Your Daddy?
Posted on September 15, 2009Fish & Richardson, the powerhouse intellectual property law firm, filed an action in federal district court against Who's Your Daddy, Inc. (?WYD?) in order to foreclose on security interests the firm obtained on several trademark registrations owned by WYD for the mark WHO?S YOUR DADDY (including their apparent signature product, energy drinks, as well as for such products as cosmetics, jewelry, sunglasses and CDs, and ?adult sexual aids?) See Fish & Richardson, P...
Blogging Hiatus
Posted on September 05, 2009As regular readers have probably noticed, I have not been posting as frequently or as substantively lately. Pre-trial work on top of all of the usual ongoing client matters that arise on a daily basis has been the major cause of the slowdown.And with a trial beginning the day after labor day that is scheduled to last several weeks as well as various other upcoming court filing deadlines, the slowdown is certainly going to continue throughout most of the month of September...
Federal Circuit Clarifies Trademark Fraud
Posted on September 01, 2009In what will certainly be the most talked about court decision of 2009 for trademark practitioners, the Federal Circuit reversed the Trademark Trial and Appeal Board?s decision in Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (T.T.A.B. 2007), which found that Bose had committed fraud when it filed a renewal for goods that it no longer sold under the mark WAVE...
Another example of what happens when you don?t consult a trademark attorney
Posted on August 27, 2009I stumbled across five interesting intent-to-use trademark applications today for the following marks: KING OF POP NEVERLAND BILLIE JEAN MOONWALK THE JACKSON THREE Each of the applications, filed in July, recite 13 different classes of goods ? each of which consists of a laundry list of goods in that class...
Ninth Circuit Tackles Trademark Tacking in ?O'? Trademark Dispute
Posted on August 26, 2009The Ninth Circuit addressed the unique issue of trademark tacking in affirming a lower court?s decision on a trademark lawsuit between two companies that produce clothing aimed towards participants of motor cross racing. See One Industries, LLC v. Jim O?Neal Distributing, Inc...
Anytime Fitness Sues Las Vegas Franchisee
Posted on August 21, 2009On August 20, 2009, Anytime Fitness, Inc. (?Anytime Fitness?) filed a lawsuit in Minnesota Federal District Court against Las Vegas residents Lawrence Fagan and Linda Fagan and several of their Nevada limited liability companies (Rainbow Fitness, LLC; Fort Apache Fitness, LLC; and Blue Diamond Fitness, LLC) for breach of contract and trademark infringement...
Arnold Sues Sara Lee Over SANDWICH THINS
Posted on August 19, 2009Arnold Products, Inc. (?Arnold?), a company known for its premium bread products (and which is part of the Bimbo Bakeries USA company), filed a trademark infringement lawsuit against Sara Lee Corporation (?Sara Lee?) in the U.S. District Court for the Southern District of California...
ICAAN Delivers Death Knell to Domain Tasting
Posted on August 14, 2009ARS Technica reports on the ?end of domain tasting? after the implementation of ICAAN?s most recent excessive cancellation penalty of $6.75 per withdrawn domain name. ICAAN?s report on the results of its new policy can be downloaded here.
Not-so-wise trademark application for WISE LATINA
Posted on August 10, 2009It never ceases to amaze me how events in the news will drive enterprising individuals to file for trademark protection on some phrase that has captured the public's attention with visions of grandeur of having an exclusive monopoly on said phrase (typically in connection with using the phrase on a t-shirt)...
Pepsi Loses Motion for Preliminary Injunction Against Coke?s Energy Drink Ads
Posted on August 06, 2009I previously wrote (link here) about the false advertising lawsuit filed in U.S. District Court for the Southern District of New York by Stokely-Van Camp, Inc. (owned by Quaker Oats which is controlled by PepsiCo Inc.) ? the maker of the Gatorade energy drink ? against The Coca-Cola Co...
Court Preliminarily Enjoins U.S. Government's Seizure of Items Bearing MONGOLS Membership Mark
Posted on August 04, 2009Pamela Chestek?s Property, Intangible blog provides an update on the Mongols trademark saga (previously blogged here) that dominated the headlines last October when, after the government seized the registered collective membership mark MONGOLS as part of a U...
Woman Sues Sirius-XM over SUNDAY BAROQUE
Posted on July 31, 2009The Connecticut Post reports (link here) on the trademark infringement lawsuit filed by an Ohio woman named Suzanne Bona-Hatem against satellite radio company Sirius-XM over the use of the mark SUNDAY BAROQUE for a radio music show featuring guess what kind of music which can be heard on guess what day of the week?Bona-Hatem?s ?Sunday Baroque? show is a four-hour syndicated Sunday morning program which is broadcast to over 90 stations and heard in over 30 states to an audience of 2...
AAA loses UDRP action to obtain AAA.net
Posted on July 29, 2009DomainNameWire reports on the UDRP divided panel decision denying the request by the American Automobile Association, Inc. (?AAA?) to obtain the domain name www.aaa.net. (HT: DefendMyDomain.com). See The American Automobile Association, Inc. v. QTK Internet c/o James M...
New York Federal Court Grants Preliminary Injunction in JAPONAIS Trademark Dispute
Posted on July 24, 2009I have previously written (link here) about the ongoing dispute between Roy Tuccillo and Geisha NYC, LLC (?Geisha NYC?) over the restaurant name ?Japonais? (the ?JAPONAIS mark?). In short, Geisha first opened its ?Japonais? restaurant in Chicago in 2003...
Las Vegas Tropicana Hotel & Casino Files Nevada State Court Declaratory Relief Action to Keep Using the TROPICANA Name
Posted on July 22, 2009Las Vegas Sun reporter Steve Green reports (link here) on the brewing internal battle over the TROPICANA name.It is a complicated story arising from the bankruptcy and reorganization of the company that owned Tropicana casinos in Las Vegas, Atlantic City, and throughout the United States and involving the competing interests of two different credit facilities...
Incorp Services Sues Nevada Corporate Services for False Advertising
Posted on July 20, 2009I previously wrote (link here) regarding the lawsuit filed by Incorp Services, Inc., (?Incorp?), a corporate formation company which also offers registered agent services for business entities nationwide, against Legalzoom.com over some allegedly false statements being made by Legalzoom representatives about Incorp?s registered agent services...
Wynn Resorts Files Declaratory Judgment Action Over XS
Posted on July 14, 2009On July 13, 209, Wynn Resorts Holdings, LLC (?Wynn Resorts?), the sole member of Wynn Las Vegas, LLC, which owns and operates the Wynn Las Vegas casino hotel and resort, filed a declaratory judgment action against NYLO Hotels, LLC (?NYLO?), in the U.S...
Rosetta Stone Files Adword Infringement Lawsuit Against Google
Posted on July 13, 2009After going after several third parties for purchasing Rosetta Stone?s trademarks as Google Adwords (see prior blog posts here and here), Rosetta Stone decided to go straight to the source and join the bandwagon of Google Adword trademark infringement lawsuits by filing its own action against Google in Virginia District Court over Google?s use and sale of Rosetta Stone?s trademarks as Google Adwords to third parties...
Mary Kay Cosmetics Sues Yahoo Over ?Yahoo Shortcuts? Feature In E-mails
Posted on July 09, 2009Both Mediapost and TheDomains have stories today about the trademark infringement filed by Mary Kay Cosmetics against Yahoo. See Mary Kay Inc. v. Yahoo! Inc., Case No. 09-cv-01278 (N.D. Tex. July 6, 2009).The crux of the complaint is over the ?Yahoo Shortcut? feature of Yahoo?s e-mail services whereby certain keywords in a particular user?s yahoo e-mail are highlighted and by scrolling the cursor over the text of the keywords a pop-up window appears which contains the search results generated by that particular term as searched through various types of integrated searches including Yahoo?s basic web search, HowStuffWorks...
Las Vegas Review Journal Article Spotlights Local Man?s Trademark Battle in England
Posted on July 07, 2009This makes two posts in a row regarding trademark battles outside of the United States.The Las Vegas Review Journal ran a story today (link here) about Las Vegas exporter Panch Prasad whose company, U.S. International Trading Corp., is the owner of the DuBarry brand of cosmetics which it purchased in 1997...
James Bond fails again to defeat DR. NO European Union trademark application
Posted on July 06, 2009While my primary focus is typical on news and decision related to U.S. trademark law, I?m making a exception given that the subject matter of this ongoing Community Trade Mark dispute involves James Bond.Danjaq LLC (?Danjaq?), the company which owns all of the intellectual property rights associated with the famed JAMES BOND movie franchise, has lost another round in its ongoing opposition battle against a German Company seeking to register the mark DR...
Re/Max Files Cybersquatting Lawsuit Against Las Vegas Real Estate Agent
Posted on July 02, 2009Steve Green of the Las Vegas Sun reported today (link here) on a cybersquatting and trademark infringement lawsuit filed by RE/MAX International, Inc. (?Re/Max?), against Cristine Rosa Lefkowitz and her corporation, C. Rosa, Inc. (?Defendants?). See RE/MAX International, Inc...
Nevada District Court Clarifies Nevada Limitations Period for Laches Presumption
Posted on June 29, 2009A Nevada District Court has clarified that, for purposes of determining whether the presumption of laches applies in a trademark infringement lawsuit filed in Nevada, the applicable statute of limitations period is four years. See Aristocrat Technologies, Inc...
Chicago?s SUPERDAWG Files Trademark Infringement Against NYC?s SUPERDOG
Posted on June 26, 2009Chicago's SuperdawgThe Chicago Tribune reported earlier this week on the lawsuit filed by the owner of Chicago?s famed SUPERDAWG restaurant (pictured above) against a New York man, Danny Omari, doing business under the SUPERDOG. See Superdawg Drive-In, Inc...
Eighth Circuit Overturns Lower Court?s Laches Decision in CRISTAL Trademark Infringement Lawsuit
Posted on June 25, 2009The relatively new-on-the-block Minnesota Law, Technology & Intellectual Property Blog reports on the decision by the Eighth Circuit Court of Appeals overturning a lower court?s decision dismissing a trademark infringement lawsuit on the basis of laches...
GIRLS GONE WILD Sues Wireless Companies Over GIRLS GONE MOBILE
Posted on June 24, 2009Xbiz reports (link here) on the trademark infringement lawsuit filed last week in the U.S. District Court for the Central District of California by the companies behind the GIRLS GONE WILD brand (Mantra Films, Inc. and GGW Marketing, LLC) against several wireless carriers (including AT&T and Verizon) and mobile phone content providers for using the mark GIRLS GONE MOBILE to promote ?adult themed entertainment products? such as downloadable videos, photos, and wallpaper of ?youthful women...
Bellagio Loses Bet on Specimen of Use for DUNES mark for Casino Services
Posted on June 18, 2009The TTABlog® writes today (link here) on the Trademark Trial and Appeal Board?s decision affirming the PTO?s refusal to allow Bellagio, LLC, the MGM-Mirage subsidiary which owns the Bellagio Hotel & Casino, to register the mark DUNES for ?casino services? based on a specimen of use showing the mark on a slot machine (pictured below)...
Toy Maker Seeks Declaratory Judgment That ?Boogie Board? is Generic for ? Guess What?
Posted on June 16, 2009Wham-O's BOOGIE® body boardHong Kong based toy company Manley Toys, Ltd., the maker of the BANZAI line of water toys including a water slide with a Banzai ?boogie board? (pictured below), filed a declaratory judgment action against Wham-O, Inc., the owner of the registered trademark BOOGIE (for body boards), after receiving a cease and desist from Wham-O over the use of the term ?boogie board?...
Pardee Homes Sues Beazer Homes over SMART LIVING
Posted on June 10, 2009On June 8, 2009, Nevada and SoCal home builder and real estate developer Pardee Homes filed a trademark infringement lawsuit against home building competitor Beazer Homes in the U.S. District Court for the District of Nevada. See Pardee Homes v. Beazer Homes USA Inc...
The owner of that popsicle is Monte?Del Monte.
Posted on June 08, 2009Rebecca Tushnet managed to combine two of my favorite topics?naked licensing and James Bond?into a single post about Del Monte?s attempts to distance itself from one of it's popsicles rembling the naked torso of current JAMES BOND 007 actor Daniel Craig...
ICANN?s Proposed Uniform Rapid Suspension Program For Fighting Cybersquatters
Posted on June 05, 2009ICANN's Implementation Recommendation Team (?IRT?) issued a report on May 29, 2009, which recommends the implementation of a new type of domain name proceeding that trademark owners could pursue in order to go after cybersquatters cheaper and faster. The proceeding is tentatively called the Uniform Rapid Suspension System (?URS?) and the IRT is recommending that it be mandatory for all new generic Top Level Domains (gTLDs)...
Incorp and Legalzoom Settle Trade Libel Lawsuit
Posted on June 04, 2009I previous wrote (link here) about the lawsuit filed by Incorp Services, Inc., (?Incorp?), a company that helps parties form corporations and other business entities throughout the United States and which also offers registered agent services for business entities nationwide, filed a lawsuit against Legalzoom...
My new favorite TTAB website - TTAB ACROSS THE BOARD
Posted on June 03, 2009Over this past weekend, I stumbled across TTAB ACROSS THE BOARD. This may be old news for some, but I had never heard of it and I think the website is a must-know for TTAB practitioners ? and will soon become their favorite TTAB related website (with the exception of TheTTABlog® of course)...
Psion Agrees to Surrender NETBOOK Registered Trademark
Posted on June 02, 2009Back in February, Intel Corp. filed a declaratory judgment action against Psion Teklogix, Inc. seeking a declaration that Psion?s registered trademark NETBOOK is generic for laptop computers (previously blogged here). The action was filed after Intel (along with numerous other well-known names like Dell, HP, and Best Buy) received a cease and desist letter from Psion...
Ozzy Osbourne Files Lawsuit Against Anthony Iommi Over BLACK SABBATH Trademark
Posted on June 01, 2009Multiple news sources (Reuters, E! Online, Entertainment Weekly) reported over the weekend on the lawsuit filed last week in the U.S. District Court for the Southern District of New York by Ozzy Osbourne against his Black Sabbath band partner Anthony Iommi over ownership of the BLACK SABBATH mark...
Software Maker Files Declaratory Judgment Action The Naked Cowboy
Posted on May 28, 2009Bloomberg reports that European mobile phone software maker Gameloft has filed a declaratory judgment action against Robert Burck, better known as ?The Naked Cowboy? (the self-appointed most famous ?busker? in New York City), in the U.S. District Court for the Central District of California...
Software Maker Files Declaratory Judgment Action Against The Naked Cowboy
Posted on May 28, 2009The Naked CowboyBloomberg reports that European mobile phone software maker Gameloft has filed a declaratory judgment action against Robert Burck, better known as ?The Naked Cowboy? (the self-appointed most famous ?busker? in New York City), in the U...
Think Computer Agrees to Drop Cancellation Petitions Against FACEBOOK
Posted on May 27, 2009WebProNews reported that the dispute between Facebook, Inc. (?Facebook?) and Think Computer Corporation (?Think Computer?) over the trademark FACEBOOK had been resolved with a confidential settlement agreement. In April 2008, Think Computer filed a cancellation petition with the Trademark Trial and Appeal Board to cancel Facebook?s trademark registration for the mark FACEBOOK...
Cartier files (and later withdraws) trademark lawsuit against Apple over ?Fake Watch? iPhone App
Posted on May 23, 2009Trademark litigation watchers are well aware of Cartier's aggressive protection of its ?TANK? line of watches (created by Louis Cartier in 1917, who was supposedly inspired by the Renault tanks that Cartier saw during World War I). I previously wrote (link here) about one such lawsuit Cartier filed against Donna Karen...
Another Quacky Lawsuit Involving Duck Tours
Posted on May 20, 2009I previously wrote here about the ongoing dispute between two amphibious tour operators battling over use of the term ?duck tour? in connection with amphibious tours. Now comes news of another amphibious tour company?s lawsuit against a competing amphibious sightseeing tour company ? only this one involves the ?quack? sound of a duck...
GunBroker.com Seeks Declaratory Relief Against Heckler & Koch and the Trademark Enforcement Efforts of Continental Enterprises, Inc.
Posted on May 18, 2009On May 14, 2009, GunBroker.com, LLC (?GunBroker?), the owner of the website www.GunBroker.com, filed a declaratory relief action against Heckler & Koch Inc. (?H&K?), the U.S. subsidiary of the German firearm manufacturer Heckler & Koch, GmbH, in the U...
Texas Court Finds Domainer Texas International Property Associates Liable for Cybersquatting
Posted on May 15, 2009District Court Judge Ed Kinkeade of the Northern District of Texas dealt a defeat to domain name company Texas International Property Associates while giving a cybersquatting victory to Hoerbiger Holding AG (?Hoerbiger?). The court dismissed with prejudice all of TIPA?s causes of action against Hoerbiger and granted summary judgment in Hoerbiger?s favor on its counterclaim of cybersquatting...
Andre Agassi and Steffi Graff Play Doubles Match Against Cybersquatters
Posted on May 13, 2009Andre Agassi & Steffi GraffLooks like Andre Agassi and Steffi Graff have finally decided to go after their .COM domain names nearly 8 years after the names were registered by other parties. And as long as they are taking legal action, why not go after the registrants of their names with the ...
The Cupcakery Sues Former Employee for Trademark Infringement
Posted on May 08, 2009On May 5, 2009, The Cupcakery, LLC (?The Cupcakery?) filed a trademark infringement lawsuit against Sift: A Cupcakery (?Sift?) and owner Andrea Ballus in the U.S. District Court for the District of Nevada. See The Cupcakery, LLC v. Ballus et al, Case No...
Iron Maiden Sues Over Comic Book Name
Posted on May 06, 2009Iron Maiden's Eddie the Head Daily Breeze reports on the trademark infringement lawsuit filed by the heavy metal group Iron Maiden against the creators of a comic book entitled ?Iron and the Maiden? (pictured below) and promoted on the website http://www...
Las Vegas Entertainer Danny Gans Dies at 52
Posted on May 01, 2009Las Vegas mourns the shocking and untimely death of modern Vegas legend Danny Gans. (Wikipedia). Gans reportedly died in his sleep sometime around 3 a.m. this morning. News accounts of his passing are posted on KVBC and TMZ. He was 52.The cause of death is currently unknown and Gans had no reported health problems...
Two Las Vegas Adult Film Companies Battle Over ?Deep Throat?
Posted on April 29, 2009On April 24, 2009, a company named Arrow Productions Ltd. (?Arrow?) filed a trademark and copyright infringement lawsuit against VCX, Ltd. (?VCX?) and its owner David Sutton. See Arrow Productions Ltd. v. VCX, Ltd. et al, Case No. 09-cv-00737 (D. Nev...
New England Patriots Lose TTAB Opposition Over 19-0 THE PERFECT SEASON
Posted on April 24, 2009Followers of John Welch?s The TTABlog® are probably familiar with his ongoing series of decisions filed under the category of WYHA (?Would You Have Appealed??). Well, after reading his write-up here on the TTAB?s recent precedential decision in Kraft Group LLC v...
HeinieSniff'n Dog Toy Maker Seeks Declaratory Relief
Posted on April 22, 2009I previously blogged (link here) about the court decision ruling against VIP Products, LLC (?VIP?) over one of its ?beer? bottle shaped squeaky dog toys. In that case, it was Anheuser-Busch, Inc. (?AB?) which sued VIP over its ?Buttwiper? dog toy (pictured above) and the court granted AB?s motion for preliminary injunction based on likelihood of success on the merits of AB?s trademark infringement claims...
Station Casinos Follows MGM?s Lead in Cybersquatting Lawsuit Against Panamanian Company
Posted on April 21, 2009The Las Vegas Sun had an article today (link here) about the cybersquatting lawsuit filed by Stations Casinos on April 17, 2009, against a Panamanian company named Smart Answer, S.A. (?Smart Answer?) and a Panamanian resident affiliated with the company named Susana Gonzales...
Amber Alert Creator Files Pro Se $150 Million Trademark Infringement Lawsuit
Posted on April 17, 2009The Houston Press has an article today about a $150 million trademark infringement lawsuit filed pro se by Bruce Seybert ? the Texas man who helped create the AMBER ALERT system (you can read his story on his website http://www.amberalertcreator.com/) ? against the National Center for Missing and Exploited Children (?NCMEC?) and its president, Ernie Allen...
Dueling OCTOMOM Trademark Applications Filed with the U.S. Patent & Trademark Office
Posted on April 16, 2009Like most people (at least I would like to think most people), I find the whole OCTOMOM story ridiculous. She has single handedly ruined the name Nadia for me ? a great name which I was going to give to my future daughter until now. I even go out of my way to avoid reading or watching any tabloid stories on Nadya Suleman just so that I won?t play a part in the media frenzy feeding into her octo-ego...
World Market Center Faces Major Setback in Cybersquatting Cases
Posted on April 14, 2009In December 2008, World Market Center Venture, LLC (?WMC?) filed approx. 11 cybersquatting lawsuits against various defendants. Several of the lawsuits appear to have been directed against registrants of domain names using some variation of the terms ?Las Vegas? and ?Market...
PepsiCo Sues Coca-Cola For False Advertising Over Energy Drink Campaign
Posted on April 14, 2009Another Pepsi v. Coke battle(Photo Credit: USA George) Reuters and Dow Jones reported today on the false advertising lawsuit filed in U.S. District Court for the Southern District of New York by Stokely-Van Camp, Inc. (owned by Quaker Oats which is controlled by PepsiCo Inc...
uBid Sues GoDaddy for Cybersquatting Over Monetized Parked Domains
Posted on April 09, 2009On April 6, 2009, Ubid, Inc. (?Ubid?) filed a cybersquatting lawsuit against The Godaddy Group, Inc. and its domain name registrar subsidiary company, Godaddy.com, Inc. (together ?Godaddy?) in the U.S. District Court for the Northern District of Illinois...
My New Favorite Barack Obama Inspired Pro Se Trademark Application
Posted on April 08, 2009There are no shortage of examples of pro se applicants attempting to capitalize on the popularity of President Barack Obama by filing applications with the U.S. Patent and Trademark Office to register trademarks with the name OBAMA. See IPBlog and PatentlyO for some prime examples...
Bruce Lee Sues Ecko and Leo Valenia?s A.V.E.L.A. Over Clothing Using Lee?s Image
Posted on April 06, 2009One of the things I like about trademark infringement complaints is the background story you get about famous individuals (albeit stated in lawyer legalese, which fortunately I can understand) ? in this case, Bruce Lee.On April 1, 2009, Bruce Lee Enterprises, LLC (?BLE?) filed a trademark infringement lawsuit against Marc Ecko Enterprises, A...
Second Circuit Overturns Google?s District Court Victory on Trademark Keyword Sales
Posted on April 04, 2009Yesterday I posted (link here) about a Massachusetts district court decision finding that a party?s purchase of a trademarked keyword to trigger sponsored links constitutes a "use" within the meaning of the Lanham Act. That court?s decision noted that the ?the Second Circuit stands alone in holding that the purchase of a competitor's trademark to trigger internet advertising does not constitute a use for the purposes of the Lanham Act...
Massachusetts District Court Finds Keyword Purchase Constitutes Trademark Use
Posted on April 02, 2009A Massachusetts District Court has held that the purchase of a trademarked keyword to trigger sponsored links constitutes a "use" within the meaning of the Lanham Act. See Hearts on Fire Company, LLC v. Blue Nile, Inc., Case No. 08-cv-11053 (D. Mass. March 27, 2009)...
State of Florida Suing Rapper Flo Rida for Trademark Infringement ? NOT
Posted on April 01, 2009A trademark April Fool?s Joke? You be the judge. Click here for the story on HipHopRx regarding the initial rumors that rapper Flo Rida was going to be sued by the State of Florida over his name and the subsequent confirmation that no such action was being contemplated...
?Heavy Hitter? Socks Trademark Infringer with Attorneys Fees Award
Posted on March 30, 2009Michael Atkins? Seattle Trademark Lawyer blog posted today (link here) about a trademark infringement victory for Las Vegas? favorite personal injury lawyer, Glen Lerner.The Ninth Circuit Court of Appeals affirmed a Nevada District Court decision awarding Lerner $124,375 in attorney?s fees for the willful infringement of Lerner?s ?ONE CALL...
Salt Lake City Sues TSA Over SIMPLIFLY
Posted on March 25, 2009On March 23, 2009, Salt Lake City Corporation (?SLC?), the municipal corporation which includes the Salt Lake City Department of Airports which operates and manages the Salt Lake City International Airport, filed a trademark infringement lawsuit against the U...
SmileyWorld's Franklin Loufrani Suffers Setback in Quest for World Domination of the Smiley Face
Posted on March 25, 2009I have previously written (here and here) about the efforts by Franklin Loufrani to claim exclusive ownership rights over the famed ?smiley face? (although admittedly those posts were primarily focused more on the efforts of Eat ?N Park Hospitality Group, Inc...
Is "The Good Guy" the next "Heavy Hitter"?
Posted on March 23, 2009There?s a new personal injury lawyer in town (or at least a new one advertising on TV) . . . Sam Harding (pictured above -- complete with cowboy hat).You know times must be tough ? even for lawyers?based on the amount of lawyer ads running on TV these days -- or perhaps it is an indication that TV stations have lowered their ad rates for TV commercials to such a level that such advertisements are now more cost effective for attorneys, but I digress...
Ninth Circuit ?Eviscerates? Laches Defense Against Trademark Infringement
Posted on March 20, 2009The Ninth Circuit has denied a defendant the defense of laches against a plaintiff despite the fact that the plaintiff waited seven years to assert its trademark rights ? all because the defendant had (in the majority?s view) not spent that enough money developing the alleged infringing mark as its own (and thus was not prejudiced by the delay)...
March Madness Trademark Frenzy
Posted on March 19, 2009Much like how the Super Bowl® brand championship football game becomes a perennial favorite topic of trademark gurus every January, the same can be said for the trademark MARCH MADNESS during the month of March. See L.A. Times article ?March Madness attracts the eagle eyes of trademark lawyers...
Geisha LLC Denied Summary Judgment Over New York Man?s JAPONAIS Trademark Registration
Posted on March 18, 2009There was another court decision in the long running battle between the founders of the restaurant Japonais and a New York man who was first to file a trademark registration application for the JAPONAIS mark with the U.S. Patent and Trademark Office (?USPTO?)...
The Ritz Wins Early Victory Against §38 Damage Claims
Posted on March 17, 2009On March 9, 2009, U.S. District Court Judge Norma Shapiro found that a Pennsylvania company?s counterclaims for damages under 15 U.S.C. §1120 arising from alleged fraudulent registrations were barred by the statute of limitations. See The Ritz Hotel, Ltd...
Michael E. Hall Ups The Ante In The Trademark Blawgosphere
Posted on March 13, 2009Those of us in the small world of trademark blogs already know Michael E. Hall for his comments and insights on trademark law which he often posts on other trademark blogs.Well Michael has finally decided to take the plunge into the legal blogosphere by starting his own trademark law blog ? Registration Ruminations (admittedly a better blog name than Las Vegas Trademark Attorney)...
Chicago Cubs Sue Another Wrigley Field Rooftop Club
Posted on March 12, 2009I previously wrote (link here) about the trademark infringement lawsuit filed in February 2008 by the Chicago National League Ball Club, L.L.C., the owner of the Chicago Cubs Major League Baseball team (the ?Cubs?), against the owners of two baseball clubs in the business of selling rooftop seats which allow patrons to watch Cubs games played at Wrigley Field because of the close proximity of Wrigley Field to the building rooftops where the clubs operate...
Rosetta Stone Announces Settlement of Search Engine Keyword Trademark Infringement Lawsuit
Posted on March 10, 2009A blogging two-for-Tuesday . . .I previously wrote (link here) about the trademark infringement lawsuit filed last year by Rosetta Stone Ltd. (?Rosetta Stone?), the publisher of the Rosetta Stone line of interactive computer software for learning foreign languages, against two New Zealand companies, Rocket Languages Ltd...
Incorp Services Sues Legalzoom Over False Statements
Posted on March 10, 2009This lawsuit is a little stale in the blogging world (filed about a month ago), but since it doesn?t seem to have gotten much press anywhere and it involves three of my favorite things (Nevada, business formation, and trademark law), I could not help but give it a passing mention...
?Smiley? Cookie Owner Brings More Frowns With Another Trademark Infringement Lawsuit
Posted on March 04, 2009Fourth Circuit Affirms Lower Court Decision That OBX Creator Has No Trademark Rights To The Term
Posted on March 02, 2009District Court Rules Against Florida Man Who Sued Owners of UNIX Trademarks
Posted on February 24, 2009Wayne R. Gray, a Florida man who sought to register (and use) the trademark iNUX in connection with a computer operating system, has suffered a defeat in his lawsuit against the companies behind the UNIX trademarks. U.S. District Court Judge Virginia Hernandez Covington of the U...
POP ROCKS sues ROCK'N'POP for trademark infringement
Posted on February 20, 2009The owner of POP ROCKS carbonated popping candy (or ?gasified candy?) filed suit against the makers of a popping candy sold under the name ROCK'N'POP.Zeta Espacial S.A. (?Zeta?), a corporation based in Spain, is the company which currently owns numerous federal trademark registrations for the mark POP ROCKS...
Article Spotlights VitaminWater Trade Dress Enforcement
Posted on February 19, 2009Law.com posted an article (link here) regarding the trade dress enforcement efforts undertaken by Energy Brands, Inc. (d/b/a Glacéau), the company behind the fruit-flavored ?enhanced? water VitaminWater which was purchased by Coca-Cola in 2007 for $4...
Mélange of Trademark Stories
Posted on February 17, 2009Gummy Bears BattleThe owner of the registered mark GUMMY BEARS (for Bracelets, Charm Danglers, General Jewelry as well as Toys and playthings, namely, board games, stuffed animals, infant toys, and musical toys) which also has a variety of other pending trademark applications filed a lawsuit against New Jersey-based Gummy Bear International (?GBI?) for using the mark in connection with the sale of music videos, animation, ringtones, mp3s, posters, stickers, and other goods (and which has its own pending applications for GUMMIBÄR and GUMMY BEAR)...
Hualapai Tribe opens a new front in its long running trademark battle over GRAND CANYON WEST
Posted on February 13, 2009The "Skywalk"at the Hualpai Tribe's Grand Canyon WestI previously wrote (link here) about the Trademark Trial and Appeal Board decision in the opposition filed by Grand Canyon West Ranch, LLC (?Ranch?) against the Hualapai Tribe over the Indian tribe?s attempt to register the mark GRAND CANYON WEST...
Adidas? $305 Million Trademark Infringement Jury Verdict Not Exceptional Enough to Merit Attorney Fees
Posted on February 12, 2009On February 6, 2009, the court involved in the ?epic? adidas v. Payless trademark infringement lawsuit that in July of last year resulted in a jury verdict of $305 million (although later reduced by the court to $65 million) has decided that the case is not exceptional enough to award attorney?s fees...
Yahoo! gets partial victory in AKAUSHI keyword lawsuit
Posted on February 10, 2009The Akaushi (Japanese Red) breed of Wagyu cattle(How do you say "moo" in Japanese?)Heartbrand Beef, Inc. (?Heartbrand?), which claims to be the only U.S. provider of Akaushi beef (meat from Akaushi cattle, a heavily regulated breed of cow from Japan), filed a lawsuit last July against Defendants Lobel?s Of New York, LLC (?Lobel?s?); Worldwide Media, Inc...
Archway Cookies Sues Voortman Cookies for Trade Dress Infringement
Posted on February 10, 2009The Charlotte Observer had a story today on a trade dress infringement lawsuit filed last week by Charlotte, North Carolina based cookie company, Lance Mfg LLC, and Archway Bakeries, LLC ?? the owner of the Archway Cookies brand and purchased by Lance out of bankruptcy in December ?? against Ontario, Canada-based Voortman Cookies Ltd...
Adventist Church Wants U.S. Government Agencies to ?Quit Now!?
Posted on February 06, 2009On February 3, 2009, The General Conference of Seventh-day Adventists (?GCSA?), the governing organization of the Seventh-day Adventist Church, filed a trademark infringement lawsuit against the U.S. Department of Health and Human Services (?HHS?) and the National Institutes of Health (?NIH?) in the U...
Bill introduced in Nevada Legislature to Update Nevada?s trademark laws
Posted on February 04, 2009Nevada?s state trademark laws will get a significant makeover if a recently introduced bill (Assembly Bill No. 115) is passed by the Nevada Legislature during its feverish 120 day session (the Nevada legislature, by law, meets biennially and its session is limited to 120 calendar days) and signed into law by the Governor...
One Former Las Vegas Businessman is a Trademark ?Virgin? No More
Posted on February 02, 2009A former Las Vegas businessman got a lesson in trademark law and found out the hard way how seriously some large companies take their trademarks.This last Saturday, the Las Vegas Review Journal had an article (link here) about a lawsuit filed by Virgin Enterprises, Ltd...
Logo History of "The Big Game"
Posted on January 29, 2009It?s that time of the year again ? when a trademark attorney?s fancy turns to stories of the National Football League?s SUPER BOWL® brand championship football game. It?s almost become a perennial favorite trademark story to write about the NFL?s aggressive efforts to quash third party use of the SUPER BOWL mark in connection with the sale of third party goods or the commercial hosting of parties to watch ?The Big Game...
Sammy Hagar files lawsuit against CABO WABO licensee
Posted on January 28, 2009I always find it interesting when a lawsuit seemingly flies under radar screen of the press -- until one reporter writes a story about it and suddenly the news is everywhere (or perhaps reporters, like bloggers, sometimes don?t have time to investigate stories so we simply report other reporter?s stories)...
Trader Joe?s Reaches Settlement Over ?Trader John?s?
Posted on January 26, 2009Looks like the trademark dispute between Trader Joe?s Co. and Gristedes Foods Inc. (previously blogged here) over the latter company?s planned use of the name ?Trader John?s? in connection with a chain of grocery stores appears to have been settled.On January 22, 2009, the parties sent a joint letter to the court requesting that the temporary restraining order entered by the court on January 14, 2009, be extended an additional 10 days while the parties work out the details of a settlement agreement which apparently had been reached in principle on January 15, 2009...
Utah Company Goes After Counterfeit ?Male Chastity? Belts
Posted on January 23, 2009You learn something new every day.On January 21, 2009, A.L. Enterprises, Inc. (?ALE?), a Nevada corporation doing business in Price, Utah, filed a lawsuit in the U.S. District Court for the District of Utah against Latitudes International (?Latitudes?), a company based in Scarborough, Ontario, Canada, and Latitudes? manager, Gordon Douglas...
Who do you think of WHEN YOU THINK OF MOUSE PADS?
Posted on January 21, 2009On January 20, 2009, Las Vegas-based Time's Up, Inc. (?Time?s Up?), which specializes in making various types of promotional mouse pads, filed a trademark infringement lawsuit against a Georgia-based promotional products company named ActNow Media, Inc...
Mr. President vs. Mr. Fluffy
Posted on January 20, 2009On a day when everyone is thinking about the Inauguration of Barack Obama, thanks to The TTABlog®, all I can think about is Mister Fluffy.
Prilosec's New Heartburn Mascot Looks Familiar
Posted on January 17, 2009Anybody else think that Burnie Abdominal Arsonist, the "flame character" in the new PRILOSEC OTC commercials, looks like the Kool-Aid Man?
American Idol goes after Texas Strip Club Over ?Stripper Idol?
Posted on January 14, 2009I feel like I should have a write-up about the trademark infringement lawsuit filed by the company behind ?American Idol? against Palazio Men's Club, an Austin, Texas strip club that hosts a weekly amateur stripping contest that the club promotes as ?Stripper Idol...
Silly Company! TRIX are for . . . chips?
Posted on January 13, 2009At least that is the position that General Mills IP Holdings II, LLC, the intellectual property holding company for General Mills which owns numerous trademark registrations for the mark TRIX, is taking in an opposition filed with the Trademark Trial and Appeal Board...
Trader Joe?s Sues New York Grocery Chain Over Trader John?s
Posted on January 10, 2009Earlier this week (link here), I wrote about the Larry Flynt?s nephews being sued because they distributed an adult movie under the company name Flynt Media Corporation. Their logic was that they have every right to use the name ?Flynt? as a business name because its their name...
Monster Cable and Monster Mini Golf Reach Amicable Resolution to Trademark Battle
Posted on January 07, 2009Like many other blogs, I previously wrote (link here) about the trademark infringement battle between Monster Mini Golf and Monster Cable Products, Inc.Yesterday, the ?Stop the Bully? webpage created by Monster Mini Golf after being embroiled in a trademark dispute with Monster Cable reported that the parties reached an amicable resolution to their dispute ? with Monster Cable dropping the lawsuit and the opposition against Monster Mini Golf thereby allowing Monster Mini Golf to proceed with registering its mark MONSTER MINI GOLF...
Larry Flynt Sues Nephews for Trademark Infringement and Dilution
Posted on January 07, 2009Flynt Publications Building in Beverly Hills, CaliforniaThe LA Times and AP reported on the trademark infringement lawsuit filed by Hustler Magazine publisher Larry Flynt on Monday against his nephews, Jimmy Flynt II and Dustin Flynt, over their decision to start their own adult film distribution company named Flynt Media Corporation...
Harrah?s Sues Indiana Strip Club Over ?Horseshoe? Trademark
Posted on January 05, 2009On December 30, 2008, Harrah's License Company, LLC ? the IP holding company for Harrah's Operating Company, Inc., the owner and operator of over 38 casinos worldwide ? filed a lawsuit against Indiana resident John Mattingly in the U.S. District Court for the Southern District of Indiana...
A ?Kool? False Advertising Lawsuit
Posted on December 29, 2008On December 23, 2008, two companies associated with the famed singing group ?Kool & the Gang? (The Name Vault, LLC and Gang Touring, Inc., together the Plaintiffs) filed a false advertising and unfair competition lawsuit against the Las Vegas Sands Corp...
Verizon Announces $33.2 Million Cybersquatting Default Judgment
Posted on December 24, 2008Several news sources (WSJ.com and Dow Jones Newswire) reported on the $33.2 million default judgment obtained by Verizon Communications Inc. against OnLineNIC, Inc. for alleged cybersquatting. See Verizon California Inc. et al v. OnLineNic Inc., Case No...
Viacom Files UDRP Action to Obtain JACKASS.com
Posted on December 22, 2008p align="center"a href="http://2.bp.blogspot.com/_k9mUv3KvFh0/SVBxTg6VIsI/AAAAAAAABVU/admVrKKgrnY/s1600-h/jackass.jpg"img id="BLOGGER_PHOTO_ID_5282846942971634370" style="WIDTH: 190px; CURSOR: hand; HEIGHT: 200px" alt="" src="http://2.bp.blogspot.com/_k9mUv3KvFh0/SVBxTg6VIsI/AAAAAAAABVU/admVrKKgrnY/s200/jackass...
VISA wins again against eVISA on trademark dilution claim under TDRA standard
Posted on December 19, 2008p align="center"a href="http://1.bp.blogspot.com/_k9mUv3KvFh0/SUw-reb9uuI/AAAAAAAABVE/ULM7OTgbfUE/s1600-h/800px-VISA_Logo_svg.png"img id="BLOGGER_PHOTO_ID_5281665379624401634" style="WIDTH: 200px; CURSOR: hand; HEIGHT: 126px" alt="" src="http://1.bp.blogspot...
Black Sabbath Co-Founder Files Trademark Infringement Lawsuit Against Live Nation Over Sales of Unlicensed ?Black Sabbath? Merchandise
Posted on December 17, 2008p align="center"a href="http://1.bp.blogspot.com/_k9mUv3KvFh0/SUmS-Vc4DAI/AAAAAAAABUk/-YNPoC_Ie4I/s1600-h/BlackSabbath_patch.jpg"img id="BLOGGER_PHOTO_ID_5280913637676420098" style="WIDTH: 400px; CURSOR: hand; HEIGHT: 207px" alt="" src="http://1.bp.blogspot...
SCRABULOUS case S E T T L E D
Posted on December 16, 2008The lawsuit filed by Hasbro, Inc. against the makers of the widely popular Facebook game SCRABULOUS (previously blogged here and here) has been voluntarily dismissed by Hasbro. See Hasbro, Inc. v. RJ Softwares, Rajat Agarwalla, and Jayant Agarwalla, Case No...
On break until December 17th
Posted on December 10, 2008I'm taking a brief vacation from blogging about the always entertaining world of trademark law. I expect to return sometime next week.Meanwhile, enjoy this little bit of nostalgia courtesy of the Los Angeles Intellectual Property Trademark Attorney Blog, which wrote about a trademark and copyright infringement lawsuit by the Bagdasarian Productions, LLC ? the company which owns the intellectual property associated with ?Alvin and the Chipmunks? ? against a company putting out an unlicensed chipmunk ?tribute? album by the so-called ?Chipper Three...
Eleventh Circuit remands district court decision on attorneys fees for successful defendant
Posted on December 05, 2008For those following the long running trademark infringement saga between Welding Services, Inc. (?WSI?) and Welding Technologies, inc. (?WTI?), the Eleventh Circuit decided last year that there was no likely confusion between the stylized WSI logo and the stylized WTI logo for welding services and affirmed the district court?s summary judgment in favor of WTI...
Monster Mini-Golf uses eBay to raise money for defense against Monster Cable trademark infringement lawsuit
Posted on December 03, 2008Techdirt has an interesting article (link here) about a small mini-golf course in Rhode Island that goes by the name Monster Mini Golf that has been embroiled in a trademark infringement lawsuit with Monster Cable Products, Inc. ? the company behind ?Monster? cables and which is well-known for filing trademark infringement lawsuits against other small companies in the U...
Chippendales Fight Over the Inherent Distinctiveness of Famed ?Cuffs & Collars? Uniform
Posted on December 01, 2008Ron Coleman?s Likelihood of Confusion® beat me to the trademark blog punch with his analysis (link here) of the ex parte appeal filed by the owner of the intellectual property behind the famed Chippendales dancers appealing the USPTO?s final refusal to register its ?unique? apparel configuration (pictured below) as a trademark for "adult entertainment services, namely exotic dancing for women in the nature of live performances" on the basis that the trade dress not inherently distinctive...
New York District Court Denies MGM Mirage's Motion to Dismiss MONTE CARLO Lawsuit
Posted on November 26, 2008I previously wrote (link here) about the long-running and contentious dispute between Société des Bains de Mer et du Cercle des Etrangers à Monaco (?SBM?), the owner of Le Casino de Monte-Carlo (pictured above), and MGM Mirage, Inc. (?MGM Mirage?) and its subsidiary, Victoria Partners, L...
Taco Bell's Answer to 50 Cent's Trademark Infringement Lawsuit
Posted on November 21, 2008Yo Yo Yo No Quiero Taco Bell !The trademark infringement story du jour on Thursday was the Answer filed by Taco Bell in the trademark infringement lawsuit filed by Curtis James Jackson, III (better known as the rapper 50 Cent) on July 23, 2008. See Jackson v...
Gallup Survives Motion to Dismiss in Trademark Infringement Lawsuit Against Gallup Pakistan
Posted on November 19, 2008Gallup, Inc. (?Gallup?), the organization famous for its surveys and public opinion polls, filed a trademark infringement and trademark dilution lawsuit in March against Business Research Bureau and Ijaz Shafi Gilani (the ?Defendants?) over the use of the mark GALLUP...
Jones Day Lives to Fight Another Day In Trademark Infringement Lawsuit Against Blockshopper
Posted on November 18, 2008Those liberal pleading rules have allowed Jones Day to survive a Motion to Dismiss Under Rule 12(b)(6) for Failure to State a Claim with respect to its trademark infringement lawsuit against BlockShopper, a website which collects publicly available information on real estate transactions, for identifying two law firm associates (Dan Malone and Jacob Tiedt) who purchased some expensive condos as being employed by ?Jones Day? and linking their names to their Jones Day website bios...
Article Highlights Intel?s Aggressive Trademark Enforcement
Posted on November 15, 2008Back in July, I highlighted (link here) an opposition filed Intel against a company that was seeking to register the mark INTELLEQUITY (an opposition which is still pending with the parties continuing to extend the time for the applicant to answer while the parties engage in settlement discussions)...
Fractional Villas Files Trademark Infringement Lawsuit Against Competing Fractional Ownership Company
Posted on November 14, 2008On November 12, 2008, Fractional Villas, Inc. (?FVI?) filed a trademark infringement lawsuit against LVPalmsplace, LLC and Las Vegas residents Yvonne Milko and Janet Armkenect (?Defendants?) in the U.S. District Court for the Southern District of California...
First Amendment Protects Grand Theft Auto from Strip Club?s Trademark Infringement Lawsuit
Posted on November 11, 2008Much has already been written about the Ninth Circuit?s decision in E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., Case No. 06-56237 (9th Cir. Nov. 5, 2008) finding that the First Amendment protected the makers of the video game Grand Theft Auto from trademark infringement claims brought by the owner of the Los Angeles strip club ?Play Pen? over a depiction of a fictional strip club named ?Pig Pen? in the video game...
The Naked Cowboy Settles Trademark Infringement Lawsuit with Mars Incorporated
Posted on November 08, 2008I?ve previously written (here and here) about the trademark infringement lawsuit filed by Robert Burck, better known as ?The Naked Cowboy,? against Mars Incorporated, the maker of M&Ms candies, over an M&M ad featuring a cartoon M&M guitar-playing street performer wearing a cowboy hat, boots, and underwear ? all reminiscent of Burck?s alter ego...
Tabasco Maker Sues Sailboat Charter Business For Trademark Infringement
Posted on November 06, 2008As an avid user of Tabasco® sauce, I relish any opportunity to write about my favorite hot sauce and its famous (although some would say infamous) trademark. I previously wrote about the controversial history of the Tabasco® trademark here.On November 4, 2008, McIlhenny Company (?McIlhenny?), the owner of the famed TABASCO® brand, filed a lawsuit against an individual named Colby D...
Sprinkles Cupcake Denied Preliminary Injunction Against Famous Cupcakes (On Technical Grounds)
Posted on November 04, 2008I previously wrote (link here) about the trademark infringement lawsuit filed by California cupcake maker Sprinkles Cupcakes against rival cupcake maker Famous Cupcakes over Sprinkles? registered "nested circle design" for "bakery goods." The news reports out yesterday (link here) report that U...
Hershey Wins TRO Against Furniture Company Based On Trade Dress Dilution
Posted on October 30, 2008Hat Tip to Marty Schwimmer for posting the complaint filed by Hershey Company (?Hershey?) against Art Van Furniture (?Art Van?), a Michigan furniture company over its use of the above picture on its furniture trucks as well as the somewhat surprising decision by the court to grant a temporary restraining order on the basis of dilution...
Sarasota Realtor?s MLS Domain Name Transferred by Network Solutions Despite Filing of Lawsuit
Posted on October 28, 2008I previously blogged (here) about the lawsuit filed by Sarasota Realtor Marc Rasmussen in an effort to keep his domain name http://www.thesarasotamls.com/ following a split decision by an arbitration panel which ordered his domain name to be transferred to the Sarasota Association of Realtors (?SAR?)...
Las Vegas Sun Article Highlights MONGOLS Trademark Seizure and Controversy
Posted on October 24, 2008As a follow-up to my own blog writeup yesterday (link here), Las Vegas Sun reporter Abigail Goldman wrote a nice article (and I'm not just saying that because yours truly is quoted therein) that ran in today's Las Vegas Sun (link here) about the U.S. Government's seizure of the MONGOLS trademark earlier this week and controversial plan to begin seizing any clothing bearing such mark...
Court Orders Mongols To Give Up Clothing Bearing Government Seized Trademark
Posted on October 23, 2008The trademark story du-jour was the decision by a California district court judge to issue an broad injunction order which essentially prevents members of the Mongols Motorcycle Club ("Mongols") from wearing any clothing bearing the Mongols? trademarked logo...
American Airlines Pursues Another Trademark Infringement Lawsuit Over Keywords
Posted on October 22, 2008Eric Goldman writes on his Technology & Marketing Law Blog about the new lawsuit filed by American Airlines against Yahoo! And Overture (dba Yahoo Marketing Services) over ?keyword? advertising. See American Airlines, Inc. v. Yahoo! Inc. et al, Case No...
Budweiser wins preliminary injunction against Buttwiper dog toy
Posted on October 21, 2008Anheuser-Busch, Inc. (?Anheuser-Busch?), the famed brewer of ?Budweiser? beer, brought a lawsuit for trademark infringement, unfair competition, and trademark dilution against VIP Products LLC (?VIP?) over VIP?s beer bottle-shaped dog squeeze toy called ?Buttwiper...
Sarasota REALTOR Files Federal Lawsuit To Keep MLS Domain Name
Posted on October 17, 2008Inman New ran an article yesterday (link here) about a Sarasota real estate agent who filed a federal lawsuit in the U.S. District Court in for the Eastern District of Virginia in September in order to keep his domain name www.thesarasotamls.com. See Rasmussen v...
Producer of ?Little House on the Prairie? Sues Kansas Museum for Trademark Infringement
Posted on October 15, 2008Several news outlets reported yesterday (here and here) on the lawsuit filed in the U.S. District Court for the Central District of California by Friendly Family Productions, LLC (?Friendly?) ? the production company behind the NBC television series Little House on the Prairie ? against Little House on the Prairie Inc...
Cosmopolitan Loses "Reverse" Cybersquatting Claim But Trademark Infringement Claims Move On
Posted on October 13, 2008I?ve previously written (here and here) about the lawsuits filed by 3700 Associates, LLC (?3700 Associates?) ? the owner of the troubled (but still under construction) ?The Cosmopolitan Resort & Casino? condo-hotel project in Las Vegas, Nevada ? against a Florida domainer in a case that epitomizes reverse cybersquatting while at the same time exploring the boundaries of trademark law by claiming that a ?web directory? website (those websites featuring a multiple click-through links) constitutes use in commerce for purposes of causes of action for trademark infringement and unfair competition (click here for previous blog entry on this type of trademark infringement litigation)...
The Epic Battle Over the Patsy's Restaurants Comes To A Bitter (but Fair) End
Posted on October 10, 2008I previously wrote (link here) about the long running dispute between Patsy's Pizzeria and Patsy's Italian Restaurant in New York City. On September 9, 2008, U.S. Magistrate Judge Ramon E. Reyes, Jr. issued a 72-page decision dealing with a flurry of post-verdict motions filed by each of the parties following the jury verdict earlier this year which found there was a likelihood of confusion between the two names...
In the trademark world, its all about timing.
Posted on October 08, 2008As noted by Marty Schwimmer's Trademark Blog, it didn't take long for some enterprising individual to turn John McCain's questionable choice of words in reference to Barack Obama at last night's second Presidential debate into what could turn into a nice little business (for a few news cycles anyway)...
Plaza Hotel & Casino loses lawsuit to stop Plaza Las Vegas
Posted on October 08, 2008I previously wrote (link here) about the lawsuit between Tamares Group (?Tamares?) ? the owner of the Plaza Hotel & Casino in Downtown Las Vegas ? against the El-Ad Group, Ltd. (?El-Ad?), the owner of New York?s famed ?Plaza Hotel? over the rights to the name ?Plaza? for a hotel-casino in Las Vegas...
Ron Riley Responds to Dozier Internet Law with Declaratory Judgment Action
Posted on October 06, 2008I previously wrote (link here) about the ?trademark infringement? lawsuit filed by Dozier Internet Law PC which essentially was a diatribe against well-known ?patent expert? Ronald Riley (along with various other arguably-defamatory comments protected, of course, from claims of defamation by the litigation privilege) with some weak allegations of trademark infringement thrown in at the end which were directed at shutting down Riley?s Dozier-gripe site www...
Master P Sued by Pepe Jeans over ?P?
Posted on October 03, 2008A London jeans company named Pepe Jeans London LLC has filed a trademark infringement in the U.S. District Court for the Southern Distirct of New York against Percy Miller, Inc., the company through which famed gangsta rapper turned mulit-millionaire businessman Master P (real name Percy Miller) is producing his P...
Exclusive Licensee of Red October Candy Loses Trademark Infringement Lawsuit Against Importer
Posted on October 01, 2008An appropos court decision to start off this first day of October.A New York district court has ruled against a U.S. importer of several well-known Russian candy brands who sued a competitor importing the same candy brands for trademark infringement. The court concluded that the company lacked standing to sue for registered trademark infringement and concluded that the importer?s sale of goods, because they were genuine goods, were protected by the exhaustion doctrine from claims of false designation of origin...
Ninth Circuit Decision Broadens Scope of Civil Penalty for Counterfeit Goods Bearing Registered Trademarks
Posted on September 29, 2008The Ninth Circuit concluded that U.S. Customs can impose a civil penalty on importers who import merchandise bearing a counterfeit mark of a registered trademark even though the owner of the registered mark does not manufacture or sell the same type of merchandise imported...
Pennsylvania Law Firm Sues Domainer Company Using Firm?s Name to Host Web Directory Sites
Posted on September 26, 2008On September 22, 2008, the Pennsylvania law firm of Hourigan, Kluger & Quinn, P.C. (?HKQ?) filed a trademark infringement and cybersquatting lawsuit in the U.S. District Court for the Middle District of Pennsylvania against Domain Discreet, a Canadian company (based on its phone number since its whois record lists an address in the remote Portugal island of Madeira) in the business of domaining (buying and selling domain names like real estate - its inventory of domain names reportedly is in excess of 300,000 domain names and growing)...
Jones Day Continues War on Free Speech by Opposing Amicus Brief in Trademark Infringement Lawsuit Against Blockshopper
Posted on September 25, 2008Paul Alan Levy provides an update (link here) on the Opposition filed by Jones Day opposing the Motion for Leave to File the Amicus Curiae Brief in Support of Blockshopper.com?s Motion to Dismiss filed by Public Citizen, the Electronic Frontier Foundation, Public Knowledge and Citizen Media Law Project (a brief that has received overwhelming praise among the trademark law community ? its impact evident by Jones Day?s quick action to exhaust any effort to prevent its consideration by the court)...
Wine and Dine Corporation Files (and then Withdraws) $250 million Cybersquatting Lawsuit
Posted on September 22, 2008This lawsuit makes you wonder ?What do you think really happened??On September 19, 2008, Wine and Dine Corporation filed a $250 million lawsuit against MDNH, Inc., Marchex, Inc. and Brendhan Hight in the U.S. District Court for the District of Nevada...
Weight Watchers Sues Campbell Soup Over Weight Watcher?s POINTS
Posted on September 19, 2008On September 16, 2008, Weight Watchers International, Inc. (?WWI?) filed a trademark infringement lawsuit against Campbell Soup Company (?Campbell?) in the U.S. District Court for the Southern District of New York. See Weight Watchers International, Inc...
UW settles its trademark infringement lawsuit with Washburn over ?Motion W? mark
Posted on September 18, 2008I previously wrote (link here) about the trademark infringement lawsuit by the Board of Regents of the University of Wisconsin System (the ?UW?) against Washburn University (?Washburn?) over the latter?s use of a W logo (pictured below) which UW claimed infringed on its so-called Motion ?W? registered trademark (pictured above)...
Seventh Circuit reignites AutoZone's trademark infringement claims against OilZone and WashZone
Posted on September 17, 2008The Seventh Circuit reversed a district court?s decision finding no likelihood of confusion as a matter of law between the large automotive parts retailer AutoZone and an Illinois businessman, Michael Strick, doing business under the service marks Oil Zone and Wash Zone...
Jones Day (Ab)Using Trademark Infringement Lawsuit To Stop Website From Posting Publicly Available Information
Posted on September 16, 2008I admit that I missed this big trademark story when it was publicized last week.In short, BlockShopper is a website which collects publicly available information on real estate transactions in Chicago, South Florida, Las Vegas, and St. Louis. For certain transactions, the website then goes one step further by linking that information with other publicly available information (e...
Frozen Yogurt Chain Pinkberry Goes After Fro-Yo Competitor Yogiberry
Posted on September 12, 2008The Maryland Daily Record had an article the other day (link here) on the trademark infringement lawsuit filed in the U.S. District Court of the District of Maryland by Pinkberry, Inc., the company behind the Los Angeles based frozen yogurt chain, against Yogiberry, Inc...
Self-Described Patent Expert Ronald Riley Sued for Trademark Infringement
Posted on September 10, 2008This is one of those stories that intertwines the worlds of patents, copyrights, and trademarks.Those in the patent world, especially those who follow the subject of patent law reform, know the name Ronald Riley. Riley, who describes himself as an inventor, entrepreneur, patent consultant, and independent inventor advocate, is well known for his comments about the patent system, patent reform, and lawyers representing inventors and large companies (click here for a blog that has chronicled some of Riley's more controversial comments among blogs and other online forums)...
Second Circuit Affirms District Court?s Denial of Relief to General Cigar in COHIBA trademark dispute
Posted on September 08, 2008As I previously blogged about here, General Cigar and Cubatabaco have been involved in a contentious trademark battle since 1997 over ownership rights to the mark COHIBA for cigars. Cubatabaco filed a cancellation proceeding against General Cigar over the registered mark COHIBA...
Nuvio and Garmin settle trademark dispute over NÜVIFONE
Posted on September 06, 2008I previously wrote (link here) about the lawsuit between internet telephone company Nuvio Corp. (?Nuvio?) and GPS maker Garmin Ltd. (?Garmin?) over Garmin?s planned sale of the NÜVIFONE phone.The parties apparently reached a confidential settlement and the lawsuit was dismissed earlier this week (Forbes...
A Test of Your Generic (Trademark) Sensibility
Posted on September 05, 2008The TTABlog® today offers up a list of Trademark Trial and Appeal Board ("TTAB") decisions addressing genericness as a test to trademark practitioners and the public on the TTAB?s seemingly schizophrenic approach to addressing genericness refusals. You may be surprised what the TTAB has found to be generic and what it has found to be merely descriptive (in which case such mark could be registered on the Principal Register upon a showing of acquired distinctiveness)...
Trademark Dispute over the ?Plaza? in Las Vegas Headed to Trial in Nevada State Court
Posted on September 04, 2008I must admit that I had missed this local story about an interesting and ongoing Nevada state court trademark battle pitting two billionaires against each other over the hotel name ?Plaza.?Reporter Brian Miller has an article appearing today on GlobeSt...
NY Times Spotlights Growing Importance of Trademarks
Posted on September 03, 2008The New York Times ran on article yesterday (link here) on the growing importance of trademarks as an intellectual property asset in an e-commerce world. (HT: Marty Schwimmer?s Trademark Blog).As the article notes, patents have often been the ?stars? of the IP world ? with trademarks relegated to the status of stepchild (Ed...
The Las Vegas Trademark Attorney Blog Turns One Year Old!
Posted on September 03, 2008It was one year ago that I started my own little foray into "blawging" -- opting to focus exclusively on my favorite intellectual property, trademarks.While it might be nice to take some time and reflect on the past year, I'm too busy trying to find the next trademark story about which to write...
Las Vegas? ?Heavy Hitter? Glen Lerner Files Declaratory Judgment Action Against Owner of ?Heavy Hitter? service mark
Posted on August 29, 2008Most cities probably have at least one personal injury lawyer who is recognized by the public simply from the attorney?s extensive TV advertisements promoting the lawyer?s legal services. In Las Vegas, that attorney is Glen Lerner. Lerner, who established his practice in Nevada in 1991, is well recognized for his somewhat cheesy low-budget TV commercials advertising his personal injury legal services which have been gracing the Las Vegas airways for many years and have made him a mini-celebrity here (I suspect that he keeps his ads intentionally cheesy at this point because while he can certainly afford more polished ads, the cheesiness of his commercials have become another one of his signatures)...
The guessing game for the new Oklahoma City NBA franchise begins at the USPTO
Posted on August 27, 2008There are several reports out today (here and here) that the name of the Oklahoma City?s new NBA franchise will be announced next week. The NBA team formerly known as the Seattle SuperSonics will have a new name, colors, and logo.The first clues of the proposed name for the new team came from several intent-to-use trademark applications filed by The Professional Basketball Club, LLC on July 25, 2008 for each of the names being considered (one application for various services related to basketball exhibitions and the second for clothing):OKLAHOMA CITY THUNDER (Tornadoes would have been more appropriate -- those familiar with Oklahoma City know what I?m talking about)OKLAHOMA CITY ENERGY (sounds like the local power company)OKLAHOMA CITY WIND (sort of a reference to Tornadoes)OKLAHOMA CITY BARONS (oil barons?)OKLAHOMA CITY BISON (when you think of basketball, do you think of buffaloes?) OKLAHOMA CITY MARSHALLS (hmmm...
Privé Nightclub Files Libel Lawsuit Against Vegas Blogger Under the Guise of Trademark Infringement
Posted on August 25, 2008On August 20, 2008, Privé Vegas, LLC (?Privé?), Justin Levine, and Frank Tucker filed a defamation lawsuit against Michael Politz and various unnamed individuals and businesses in the U.S. District Court for the District of Nevada under the pretext of a trademark infringement/dilution-by-tarnishment lawsuit...
The Girls of Glitter Gulch go after Unauthorized ?Glitter Gulch? Website
Posted on August 20, 2008On August 18, 2008, Granite Gaming Group II, LLC (?Granite?) filed a lawsuit against Primal Ventures, Inc., STRIPCLUBNETWORK.COM, Cybertech Internet Solutions and Paul J. Brown (collectively, the Defendants). See Granite Gaming Group II, LLC v. Primal Ventures, Inc...
Fifth Circuit finds Urgent Care to be generic for providers of urgent care medical services
Posted on August 19, 2008The Fifth Circuit Court of Appeals reversed a lower court?s decision granting a preliminary injunction enjoining an urgent care medical provider from using the term ?Urgent Care.? See Urgent Care, Inc. et al v. South Mississippi Urgent Care, Inc. et al, 2008 U...
Sprinkles Cupcakes claims trademark infringement over its cupcake dot
Posted on August 16, 2008The news outlets were abuzz today about the trademark infringement lawsuit filed by California cupcake maker Sprinkles Cupcakes against rival cupcake maker Famous Cupcakes (Reuters news report here).The lawsuit, filed on Thursday, claims that Famous has appropriated Sprinkles? signature ?nested circle design? trademark into its packaging, store décor, and website...
Britney Spears? stint at ?Rehab? Leads to Trademark Infringement Lawsuit against the Hard Rock Hotel
Posted on August 12, 2008On August 8, 2008, Jimmy Daniel Alexander, a member of the rock band ?Rehab,? filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against the owners of the Hard Rock Hotel & Casino (?Hard Rock?) in Las Vegas...
KRED faces Opposition by Kellogg?s
Posted on August 08, 2008On August 7, 2008, Kellogg North American Company (?Kellogg?) filed a Notice of Opposition against a company named Sunshine City, LLC (?Sunshine?), which hosts a website named Ghetto University (?GU?). See Kellogg North American Company v. Sunshine City, LLC, Opposition No...
Cartier Sues Donna Karen Over TANK Watches
Posted on August 07, 2008A Cartier Tank American Ladies Watch Retail Price $32,900Several news outlets (here and here) reported on the trademark infringement lawsuit filed by Cartier against Donna Karen over the mark TANK for watches.The ?Tank? watch was created by Louis Cartier in 1917, who was supposedly inspired by the Renault tanks that Cartier saw during World War I...
H&R Block Sues American Express Over ?I got people?
Posted on August 05, 2008H&R Block last week filed a trademark infringement lawsuit against American Express over its trademark ?I got people.? News stories here and here. H&R Block points to what it calls its ?My people? ad campaign where customers are depicted relying on H&R Block?s ?people? to handle not just their taxes but other routine personal assistant tasks...
Hobbit Travel Successfully Asserts Laches Defense Against Tolkien Enterprises?s Trademark Infringement Lawsuit
Posted on August 01, 2008Saul Zaentz Company d/b/a Tolkien Enterprises (?Tolkien?), which owns the rights to use and license others to use marks and other intellectual property related to novelist J.R.R. Tolkien's books, including The Hobbit, was defeated in its attempt to stop a Minnesota-based travel agency, Wozniak Travel, Inc...
Las Vegas Mexican Restaurant Loses TTAB Opposition
Posted on July 30, 2008The TTABlog® reported on a decision by the Trademark Trial and Appeal Board ("TTAB") upholding an opposition brought by the owners of Zabar?s, a gourmet epicurean emporium in the Upper West Side of New York City, against the owners of Zaba's Mexican Grill, a Las Vegas-based Mexican restaurant chain...
Facebook Shuts Down Scrabulous in U.S. and Canada After Notice of Lawsuit Against Game Makers
Posted on July 29, 2008Well, it didn?t take long for Facebook, Inc., the popular online networking site, to give into the demands of Hasbro Inc., the owner of the rights to the famed Scrabble game in the United States and Canada. Reports today from Bloomberg News (link here) are that Facebook, Inc...
The Next Major Front Line for Trademark Infringement Battles: Children?s Birthday Parties
Posted on July 28, 2008I'm a little late on this story which ran in the Wall Street Journal last week, but which the Baltimore Sun republished again today (link here) discussing the trademark infringement issues encountered by companies in the business of providing costumed characters for children?s birthday parties...
Intel Files Opposition Against INTELLEQUITY service mark application
Posted on July 24, 2008A New Jersey company named Business Development Partners, LLC (?BDP?) is seeking to register the mark INTELLEQUITY for ?consulting services in the field of managing intellectual properties.?On July 23, 2008, however, Intel Corporation (?Intel?) filed a Notice of Opposition against BDP arguing that registration should be denied because the mark is likely to cause confusion with and/or dilution of Intel?s famous family of INTEL marks...
Victoria?s Secret Files Lawsuit Over Bizarre Nevada Trade Names
Posted on July 23, 2008This falls into that category of trademark infringement lawsuits called ?What were they thinking??Last week, Victoria?s Secret filed a trademark infringement lawsuit against several named individuals and purported corporations in the U.S. District Court for the District of Nevada...
American Airlines and Google Reach Quiet Settlement in Google Adword Trademark Infringement Case
Posted on July 18, 2008I've written before on lawsuits filed by such trademark owners as Rosetta Stone (link here) and Hearts on Fire (link here) against competiting companies that purchased their trademarks as a Google AdWords so that Sponsored Links would appear whenever an internet user would perform a search for those trademarks...
Rosetta Stone Files Trademark Infringement Lawsuit Against Rocket Languages Over Keyword Advertising ?Piggybacking?
Posted on July 16, 2008On July 2, 2008, Rosetta Stone Ltd., the maker of the Rosetta Stone line of interactive computer software for learning foreign languages, filed a trademark infringement lawsuit in the U.S. District Court for the Central District of California against two New Zealand companies, Rocket Languages Ltd...
Tiffany & Co. loses its contributory trademark infringement lawsuit against eBay
Posted on July 14, 2008The trademark news story du jour was the long awaited (and lengthy) decision in the Tiffany v. eBay trademark infringement lawsuit. See Tiffany (NJ) Inc. and Tiffany and Company v. eBay, Inc., Case, No. 04-cv-04607 (July 14, 2008). See news stories here and here...
Las Vegas Businessman ordered to stop using the name COHIBA on cigars and rum
Posted on July 12, 2008The Associated Press reported today (link here) that Las Vegas businessman Philip Restifo, President of the Nevada corporation Cohiba Caribbean?s Finest Inc. and the Bahamas corporation Data Commodities Ltd., was ordered on June 30, 2008 by U.S. District Court Judge Brian Sandoval to stop using the mark COHIBA on cigars and rum and to pay General Cigar Co...
Tenth Circuit Applies Supreme Court?s MedImmune Precedent to Trademark Infringement Declaratory Judgment Actions
Posted on July 10, 2008Both Likely to be Confused and Blawgletter® have succinct write-ups on the Tenth Circuit?s decision in Surefoot LC v. Sure Foot Corp., No. 06-4294 (10th Cir. July 8, 2008) addressing whether the standard for seeking declaratory judgments of non-infringement established by the U...
TTAB fires another fraud salvo into the trademark legal waters
Posted on July 09, 2008The TTABlog® reports (link here) on another precedential decision by the Trademark Trial and Appeal Board that demonstrates again the ever increasing threat faced by trademark applicants and owners (not to mention the trademark attorneys representing them) of having their trademark applications opposed and trademark registrations cancelled due to fraud...
The American Trial Lawyers Association loses motion to dismiss lawsuit brought by the former Association of Trial Lawyers of America
Posted on July 07, 2008The American Association for Justice (?AAJ?), formerly known as the Association of Trial Lawyers of America, won a first round battle in its trademark infringement lawsuit against The American Trial Lawyers Association, Inc. a/k/a THE ATLA (the ?Association?), and J...
IP Today article highlights splits of authority in sponsored link trademark infringement cases
Posted on July 02, 2008Intellectual Property Today published an article entitled ?Multiple Splits of Authority Point Out the Need to Think Strategically in Sponsored Link and Other Internet Advertising Cases? which provides a nice summary of the confused state of court cases that have dealt with claims of trademark infringement by trademark owners against competitors who have purchased a trademark as a search engine keyword to trigger a ?sponsored link? advertisement.
Las Vegas Lighting Systems Company Sues Las Vegas Man and His Iowa Corporation Over ?4 WALL?
Posted on July 02, 2008A lighting display designed by 4Wall Entertainmentfrom the 2008 Consumer Electronics Show On June 27, 2008, 4 Wall Enterprises, Inc., a Nevada corporation doing business as 4Wall Entertainment (?4 Wall Nevada?), filed a trademark infringement lawsuit in the U...
On remand, Johnson & Johnson wins injunction against Heartland Sweeteners in Splenda® trade dress infringement lawsuit
Posted on June 30, 2008Rebecca Tushnet?s 43(B)log writes about the latest development in the ongoing trade dress dispute between McNeil Nutritionals, LLC (?McNeil?), the Johnson & Johnson division that makes Splenda® artificial sweetener (a brand of the artificial sweetener, sucralose), and Heartland Sweeteners LLC (?Heartland?), which produces and distributes store-brand sucralose in a similar looking yellow packaging for big-chain supermarkets...
Hearts on Fire Sues Blue Nile in another sponsored link ?adword? trademark dispute
Posted on June 27, 2008On June 20, 2008, Hearts on Fire Company, LLC (?HOF?), the company behind the ?Hearts On Fire? diamond (a/k/a The World's Most Perfectly Cut Diamond) (pictured above), filed a trademark infringement lawsuit against Blue Nile, Inc. (?Blue Nile?), an online retailer of certified diamonds and jewelry, in the U...
Partial Victory for The Naked Cowboy in lawsuit over M&M cartoon ad
Posted on June 25, 2008I?m a few days late on the district court decision (news reports here, here, and here) by Judge Denny Chin of the U.S. District Court for the Southern District of New York dismissing in part the lawsuit filed by Robert Burck (a/k/a ?The Naked Cowboy?) against Mars Incorporated, the maker of M&Ms candies, over an M&M ad featuring a cartoon M&M guitar-playing street performer wearing a cowboy hat, boots, and underwear ? all reminiscent of Burck?s alter ego...
Court denies motion to dismiss Full Sail University?s lawsuit against Texas International Property Associates over its click-through web directory
Posted on June 23, 2008On June 17, 2008, United States District Judge Joe Fish of the Northern District of Texas refused to dismiss a trademark infringement lawsuit brought by Full Sail, Inc. (?FSI?) against Dauben, Inc. (d/b/a Texas International Property Associates) (?TIPA? or ?Dauben?) arising from Dauben?s registration of the domain name FULLSAILUNIVERSITY...
First Circuit Reverses Lower Court Injunction in the Boston ?Duck Tours? Battle
Posted on June 19, 2008In a lengthy opinion by the First Circuit Court of Appeals, the court of appeals reversed a district court?s decision granting a preliminary injunction in favor of Boston Duck Tours LP (?Boston Duck?) enjoining Super Duck Tours, LLC (?Super Duck?) from using the term ?duck tour? in its name and using a logo of a duck after finding that the district court committed clear error in finding the phrase ?duck tour? to be non-generic for such sightseeing tours, and thereby according it too much weight in its likelihood of confusion analysis...
Las Vegas? Cosmopolitan Resort & Casino gets a taste of its own trademark medicine
Posted on June 17, 2008I?ve previously written on the flurry of trademark infringement lawsuits filed by 3700 Associates, LLC (?3700 Associates?) ? the developer of the troubled Cosmopolitan Resort & Casino in Las Vegas ? against various named defendants (link here), including one prior post (link here) discussing reverse cybersquatting claims against 3700 Associates arising from one of its first cybersquatting lawsuits filed in Nevada which was dismissed for lack of jurisdiction, but subsequently refiled in Florida...
Eleventh Circuit Decision Highlights Importance of Expeditious Prosecution of Trademark Applications
Posted on June 16, 2008Rebecca Tushnet?s 43(B)log has a good summary (link here) of the Eleventh Circuit Court of Appeals decision in Natural Answers, Inc. v. SmithKline Beecham Corp., Case No. 06-15084 (11th Cir. June 13, 2008) affirming a lower court?s decision granting summary judgment in favor of SmithKline Beecham, the maker of a stop-smoking lozenge named Commit Lozenges, and rejecting trademark infringement and false advertising claims brought by Natural Answers, which at one time sold a stop-smoking lozenge under the name HERBAQUIT...
MGM?s ?The Signature? Condo-Hotel goes after unit owner for trademark infringement
Posted on June 12, 2008On June 20, 2008, MGM Grand Hotel, LLC (?MGM?) and Signature Condominiums, LLC (?Signature? and together with MGM, the ?Plaintiffs?) filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against an individual named Jarrett Curd...
Apple and Podfitness settle trademark infringement dispute over Apple?s IPOD
Posted on June 12, 2008Looks like Podfitness, Inc. (?Podfitness?) wasn?t fit enough to continue to battle with the almighty Apple, Inc. (?Apple?) and its famed IPOD trademark. Podfitness was sued by Apple on September 21, 2006, for various trademark related causes of action including registered trademark infringement, federal unfair competition, federal dilution, trade dress infringement, cybersquatting, and related state law claims arising from Podfitness? use of certain ?POD? marks, including PODFITNESS, PODFITNESS...
Starbucks fails again to defeat ?Mister Charbucks? even under amended federal dilution law
Posted on June 09, 2008A district court decision has once again concluded that a family-owned roastery in New Hampshire can sell it dark coffee blend under the name ?Mister Charbucks? or ?Mr. Charbucks?Starbucks Corp., the nation's largest coffee retailer, had filed a lawsuit against Wolfe?s Borough Coffee, Inc...
Battle of the Wolfgangs Part II ? The ?other? Wolfgang Strikes Back
Posted on June 06, 2008I previously wrote here about the lawsuit filed by Wolfgang Puck against Wolfgang Zwiener over the latter?s use of the name ?Wolfgang?s Steakhouse by Wolfgang Zwiener? in connection with Zwiener?s recently opened Beverly Hills steakhouse which is close in proximity to Puck's own Beverly Hills steakhouse restaurant, Cut...
Sweet Leaf Tea files declaratory judgment of noninfringement against maker of SweetLeaf Stevia sweetener
Posted on June 04, 2008The Austin Business Journal ran an article today (link here) on a lawsuit filed by the Sweet Leaf Tea Company (?Sweet Leaf Tea?), a producer of a line of ready-to-drink teas marketed under the name Sweet Leaf Tea, against United American Industries, Inc...
Tenth Circuit affirms dismissal of trademark infringement lawsuit by LDS Church critic against parody website
Posted on June 03, 2008The Tenth Circuit Court of Appeals affirmed a lower court decision denying claims of trademark infringement, unfair competition, and cybersquatting by an organization critical of the Church of Jesus Christ of Latter-day Saints (LDS Church). See Utah Lighthouse Ministry v...
Trademark Battle Between the Wolfgangs
Posted on May 30, 2008BusinessWeek ran an article today (link here) in the Small Biz section of its website written by Stacy Perman entitled ?Wolfgang Puck vs. Wolfgang Zeiener? discussing the recent trademark infringement lawsuit filed by Wolfgang Puck in Los Angeles Superior Court against Wolfgang Zwiener, the owner of ?Wolfgang?s Steakhouse by Wolfgang Zwiener...
U.S. Supreme Court denies Rosenruist-Gestao Petition for Writ of Certiorari
Posted on May 27, 2008The U.S. Supreme today denied the petition for writ of certiorari filed by Rosenruist-Gestao E Servicos LDA in its appeal of the Fourth Circuit?s decision holding that a foreign corporation (Rosenruist-Gestao) can be compelled to answer a Rule 30(b)(6) deposition subpoena issued pursuant to 35 U...
District Court finds ?Victor?s Little Secret? likely to tarnish, but not blur, the famous VICTORIA?S SECRET mark under the TDRA
Posted on May 24, 2008For trademark practitioners, the words ?Victor?s Little Secret? means so much. This particular mark, used by Victor and Cathy Moseley over eight years ago as the name of their Elizabethtown, Kentucky adult retail store, led to a trademark battle with Victoria?s Secret (?V Secret?) that went all the way up to the U...
Computer Company Sues Apple and CBS over MIGHTY MOUSE computer mouse
Posted on May 21, 2008On March 20, 2008, Man & Machine, Inc. (?M&M?), a Maryland-based computer accessories provider, filed a trademark infringement lawsuit Apple, Inc. (?Apple?), CBS Corporation, and CBS Operations Inc. (?CBS Operations?) over the word mark MIGHTY MOUSE to identify a computer mouse...
Is a trademark battle brewing over KNUT?
Posted on May 19, 2008There is an interesting trademark battle possibly brewing for fans of the famed polar bear cub KNUT (pictured above).Knut was born at the Berlin Zoo in December 2006. After Knut was born, Knut?s mother rejected and abandoned the newly born cub. The Berlin Zoo had not had a polar bear cub survive past infancy in more than 30 years, so zookeepers opted to raise him...
American Red Cross receives relief from Johnson & Johnson trademark lawsuit
Posted on May 17, 2008The New York Times reported today (link here) on the federal court decision late Wednesday in the trademark infringement lawsuit between Johnson & Johnson (?J&J?) and the American National Red Cross (?ARC?) over the famous "Red Cross" symbol. See Johnson & Johnson v...
PTO revises proposed rules for Requests for Reconsideration of a Final Office Action in Trademark Cases
Posted on May 14, 2008On April 28, 2008, the U.S. Patent and Trademark Office ("PTO") withdrew its previous proposal (link here) to amend the Rules of Practice in Trademark Cases to require a request for reconsideration of an examining attorney?s final refusal to be filed through the PTO?s Trademark Electronic Application System (??TEAS??) within three months of the mailing date of the final action...
XS v. SX -- Another Energy Drink Battle
Posted on May 13, 2008This is one of those trademark applications where at first I?m a little surprised the PTO even allowed it to be published for opposition, but then once you know how the PTO searched for conflicting marks, it becomes a little more obvious ? and underscores the importance of the trademark opposition process...
Las Vegas Trademark Attorney Moving to the Las Vegas Intellectual Property Law Firm of Weide & Miller, Ltd.
Posted on May 09, 2008I am pleased to announce that, effective Monday, May 12, 2008, I will be joining the Las Vegas intellectual property law firm of Weide & Miller, Ltd.Weide & Miller is a full-service intellectual property law firm which prides itself on providing quality legal services in all areas of intellectual property law at affordable rates compared to other large intellectual property law firms...
Battle of "The Rat Pack" Tribute Shows
Posted on May 08, 2008On May 7, 2008, TRP Entertainment, LLC (?TRP?) filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against BC Entertainment, Inc. (?BCE?), Barrie Cunningham, and Ian Hammer (the ?Defendants?). See TRP Entertainment, LLC v...
Exclusive Licensee of ?Rush? Merchandise Rushes to Court to Stop Counterfeiters
Posted on May 07, 2008On May 1, 2008, a company named Showtech Merchandising, Inc. filed a trademark infringement lawsuit in Nevada District Court against various John Does, Jane Does, and ABC Company. See Merchandising, Inc v. Various John Does, et al, Case. No. 08-cv-00232 (D...
Terraserver sues Microsoft for trademark infringement over Terraserver-USA.com
Posted on May 05, 2008I?m a little surprised this lawsuit has not received much press yet.On May 1, 2008, Terraserver.com Inc. (?Terraserver?) filed a trademark infringement lawsuit in the U.S. District Court for the Eastern District of North Carolina against Microsoft Corporation (?Microsoft?)...
Barkstrong bites back at Lance Armstrong Foundation over yellow pet collars
Posted on May 03, 2008Remember BARKSTRONG? The company, through its website http://www.barkstrong.net/, raises money for animal charities by selling yellow pet collars bearing the words BARKSTRONG and PURRSTRONG. In September 2007, the Lance Armstrong Foundation filed a lawsuit in the U...
Owner of ISOFITNESS® exercise system files trademark infringement lawsuit in pro per
Posted on May 02, 2008I previously wrote (link here) about a pro se plaintiff who filed a trademark infringement lawsuit against MySpace. On April 28, 2008, another trademark owner, Greg Kelly, filed in pro per a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against Tom Morris, Marsha Morris and TM Wellness Inc...
Juicy Couture sues Victoria?s Secret for trademark and trade dress infringement
Posted on April 29, 2008I previously wrote (link here) about the efforts by Juicy Couture Inc. (?Juicy Couture?), the owner of the mark JUICY (most often recognized on the back side of a skintight terrycloth sweatpants) to stop the owner of the Juicy Campus website from selling clothing emblazoned with the name ?Juicy Campus...
What are the differences between a trademark, service mark, certification mark, collective mark, trade dress, and trade name?
Posted on April 28, 2008I am asked the questions often enough that their answers are worthy of a blog post.TrademarkA ?trademark? is any word, name, symbol, or device, or any combination thereof, used by a party to identify and distinguish its goods from those manufactured or sold by others and to indicate the source of the goods (even if that source is unknown)...
Finding expert witnesses for trademark cases
Posted on April 25, 2008Michael Atkins offers some excellent advice on his Seattle Trademark Lawyer blog about finding expert witnesses for trademark cases.One popular online source is the online expert witness directory JurisPro. Other expert witness websites listing the credentials of various trademark experts include ALMExperts...
Federal court judge supports Domino?s Pizza?s right to sell Brooklyn Style Pizza
Posted on April 24, 2008On April 21, 2008, a U.S. Magistrate Judge for the Eastern District of Texas issued his report and recommendations recommending that the district court grant a motion for summary judgment filed by Domino?s Pizza (?Domino's?) in a trademark infringement lawsuit brought by The Great American Restaurant Company (?Pizzeria?) over Domino?s use of the name ?Brooklyn Style Pizza...
Caribbean Crème files trademark infringement lawsuit against Krispy Kreme over ?Caribbean Kreme?
Posted on April 22, 2008Caribbean Creme's smoothie machineOn April 21, 2008, Caribbean Crème, Inc. (?CCI?), a St. Louis, Missouri-based company that produces and sells equipment to make a fruit smoothie by the name ?Caribbean Crème,? filed a trademark infringement lawsuit against Krispy Kreme Doughnuts, Inc...
Energy Drink Maker Wins Preliminary Injunction Against Rival Based on Trade Dress Infringement
Posted on April 21, 2008On April 14, 2008, a Michigan federal district court judge granted the motion for preliminary injunction brought by Innovation Ventures, LLC d/b/a Living Essentials (?Living?) against rival energy drink maker N2G Distributing, Inc. and Alpha Performance Labs (together ?N2G?) based on trade dress infringement by N2G of Living?s distinctive product packaging while rejecting Living?s claims for trademark infringement...
Cost Plus World Market and World Market Center settle trademark dispute over WORLD MARKET
Posted on April 18, 2008I previously wrote (link here) about the trademark infringement lawsuit filed by Cost Plus World Market against the Las Vegas-based World Market Center over the mark WORLD MARKET CENTER. See Cost Plus Management Services, Inc. et al v. World Market Center Venture, LLC, Case No...
Planet Hollywood sues to stop local Las Vegas music band from using the name SUNSET STRIP
Posted on April 17, 2008On April 16, 2008, OpBiz, LLC (?OpBiz?), the owner and operator of the Planet Hollywood Resort & Casino (?Planet Hollywood?) in Las Vegas, filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against The Production Group, LLC (?TPG?) and its managing member, Glenn Medas, and Shay/Chambers, LLC d/b/a M/C Productions (?MC Productions?) and its managing member David Michael Chambers...
Harry Potter and the Disappearing Trademark Infringement Claims
Posted on April 16, 2008In the trial of the lawsuit filed by J.K. Rowling and Warner Bros against RDR Books over its planned publication of the ?Harry Potter Lexicon? (a print version of the free-of-charge Harry Potter Lexicon fan website - http://www.hp-lexicon.org/ - created by Steven Vander Ark), so much of the media attention has focused on the copyright infringement claims that I was beginning to wonder when the parties would get around to the ?good stuff? ? namely, the claims for trademark infringement and unfair competition that were part of the original and amended complaint...
NIKE goes after MIKE
Posted on April 15, 2008Another one for the category ?What was this applicant thinking??Nike, Inc. (?Nike?), owner of several registrations for the mark NIKE (for footwear and clothing), filed an opposition today against an individual named Scott Nelson who filed a Section 1(b) intent-to-use trademark application to register the mark MIKE (for various clothing)...
What?s in a name? Ask Roscoe and Patsy.
Posted on April 13, 2008It was quite a week for restaurant name trademark disputes.Earlier this week, I wrote (link here) about a North Carolina pancake house that was doing business under the name ?It?s Hop?n? that was sued for trademark infringement by IHOPOn Thursday, the big story (here and here) was about the Los Angeles-based chicken and waffles chain ?Roscoe's House of Chicken 'n Waffles? (?Roscoe?s?) The restaurant chain filed a trademark infringement lawsuit against the owner of ?Rosscoe's House of Chicken and Waffles? (?Rosscoe?s?) in Chicago (two ?S??s and the word ?and? instead of an ampersand), for infringement of its service mark ROSCOE'S HOUSE OF CHICKEN N WAFFLES (pictured below)...
A JUICY trademark dispute
Posted on April 10, 2008On April 4, 2008, Juicy Couture, Inc., the owner of several trademark registrations on the mark JUICY and other variations, filed a trademark infringement lawsuit against Lime Blue, LLC (?Lime Blue?), the owner of the website http://www.juicycampus.com/, in the U...
Two big players give two small business owners lessons in trademark infringement
Posted on April 09, 2008Two stories in the news yesterday showcase the perils in which small businesses often find themselves when they get crosswise with big companies with powerful trademark portfolios. The first story (link here) is about Ken Litvack, the founder of NavQuest ? a website that helps boat owners create their own ocean navigational charts...
A Trademark Two-for-Tuesday for Eleventh Circuit appeals: Use of trademark in Metatags upheld as infringement
Posted on April 08, 2008In addition to the Eleventh Circuit?s decision late last week regarding the mark ANGEL FLIGHT (discussed here), there was another trademark related decision published yesterday by the Eleventh Circuit Court of Appeals in a case involving trademark infringement arising from the use of trademarked terms in website metatags...
Eleventh Circuit affirms lower court decision in favor of Georgia group on use of ANGEL FLIGHT mark
Posted on April 08, 2008The Eleventh Circuit Court of Appeals last week reaffirmed a lower court?s decision upholding a Georgia organization?s senior rights to use the mark ?Angel Flight? in Georgia, Alabama, South Carolina, Mississippi, North Carolina, and Tennessee. The court also upheld the lower court?s decision to cancel a trademark registration for the mark ?Angel Flight? on the basis that it was acquired through fraud...
Contentious trademark opposition over MONTE CARLO spills over into federal court
Posted on April 04, 2008On March 28, 2008, Société des Bains de Mer et du Cercle des Etrangers à Monaco (?SBM?), a société anonyme Monegasque organized under the laws of the Principality of Monaco, filed a trademark infringement lawsuit against MGM Mirage, Inc. (?MGM Mirage?) and Victoria Partners, L...
Motorola Files Counterfeit Lawsuit, Obtains Temporary Restraining and Seizure Order Against Two Las Vegas Trade Show Exhibitors
Posted on April 03, 2008On April 1, 2008, Motorola, Inc. (?Motorola?) filed a trademark infringement lawsuit against Mocoola Accessories Wholesale, Inc. and Big Apples Accessories, Inc. (together , the Defendants) in the U.S. District Court for the District of Nevada. See Motorola, Inc...
The future of cybersquatting litigation ? battling click-through web directories and typosquatting
Posted on April 02, 2008The Las Vegas Business Press ran an article today by Valerie Miller entitled ?www.catchusifyoucan.com? (link here) on the current state and future trends of ?cybersquatting? litigation.The article notes that, as common domain names become less available, there are a growing number of companies registering domain names containing common misspellings of other well-known domains (so-called ?typosquatting?)...
USPTO Celebrates Trademarks with National Trademark Expo
Posted on April 02, 2008"T. Markey"The U.S. Patent and Trademark Office (?USPTO?) is hosting the National Trademark Expo from Thursday, April 10 to Saturday April 12. The Expo is free and open to the public from 10 a.m. to 6 p.m. at the USPTO?s Madison Building atrium, 600 Dulany Street in Alexandria, Virginia...
TTAB upholds opposition based on applicant?s failure to show bona fide intent to use
Posted on March 30, 2008On March 28, 2008, the Trademark Trial and Appeal Board (the ?Board?) handed down a precedential decision upholding an opposition by L.C. Licensing, Inc., the owner (at the time the opposition was filed) of the word mark ENYCE and mark ENYCE and design (pictured above) both for apparel and headwear, against Cary Berman, the applicant for the mark ENYCE for custom automotive accessories...
Sensient Flavors obtains Temporary Restraining Order against SensoryFlavors
Posted on March 29, 2008On March 10, 2008, Sensient Technologies Corporation along with one of its subsidiaries, Sensient Flavors LLC (together ?Sensient?), filed a lawsuit in the U.S. District Court for the Eastern District of Missouri again SensoryFlavors, Inc., Performance Chemicals & Ingredients Co...
Portugal-based Rosenruist-Gestao files U.S. Supreme Court Cert. Petition on Fourth Circuit?s Decision to Enforce 35 U.S.C. §24 Subpoena
Posted on March 26, 2008The TTABlog® posted a copy (link here) of the U.S. Supreme Court Petition for a Writ of Certiorari filed March 20, 2008, by Portuguese Company Rosenruist-Gestao E Servicos LDA (?Rosenruist-Gestao?). See Rosenruist-Gestao E Servicos LDA, fka Rosenruist-Gestao E Servicos Sociedade Unipessoal LDA v...
Trademark 101: Registering domain names as trademarks
Posted on March 24, 2008I am often asked about whether a domain name can be registered as a trademark.The answer is Yes ? a domain name can be registered as a trademark or service mark with the U.S. Patent and Trademark Office (?USPTO?), subject to certain qualifications (although these qualifications actually apply to non-domain name trademark/service mark applications as well)...
Pro Se Plaintiff Files Some Kind of Trademark Lawsuit Against MySpace
Posted on March 22, 2008For those of you who get a kick out of reading complaints filed by pro se plaintiffs, check out this lawsuit (link here) that purports to be a trademark infringement lawsuit against MySpace, Inc. (?MySpace?) filed on March 20, 2008, by pro se plaintiff Donnell Mitchell (d/b/a Phenomenon Licensing) (?Mitchell?) in the U...
IRS Field Memo provides guidance for drafting trademark sale agreements
Posted on March 20, 2008Alvarez and Marsal recently sent out a newsletter (link here) that discussed a December 28, 2007 Internal Revenue Service Field Attorney Advice memorandum addressing a taxpayer?s ultimately unsuccessful attempt to recharacterize a license agreement as a sales agreement for tax purposes...
?Vegas? Magazine Mega-Publisher Sues Connecticut Niche Publisher Over a ?Niche? mark
Posted on March 19, 2008On March 14, 2008, Niche Media Holdings, LLC (?NMH?) filed a lawsuit against Niche Downtown, LLC and Joseph A. Gazzola (the ?Defendants?) in the U.S. District Court for the District of Nevada. A copy of the complaint can be downloaded here. March 2008 Cover of "Vegas" MagazineNMH is the publisher of such well-known regional magazines as ?Los Angeles Confidential,? ?Ocean Drive,? and ?Vegas? ? those oversized glossy magazines with articles and advertising catering to a high-end luxury market...
The TTABlog finally gets the ®ecognition it deserves.
Posted on March 19, 2008Congratulations to John Welch of The TTABlog®, who, after an unsuccessful appeal to the institutution to which he has devoted his blogging life, finally got his ® for THE TTABLOG based on acquired distinctiveness under Section 2(f).I've updated the name on my list of blog links -- along with a long overdue ® for Ron Coleman's Likelihood of Confusion® (sorry for the oversight Ron)...
Royal trademark battle over who will be the reigning WINE KING of New Jersey
Posted on March 17, 2008The ?Real? Wine King?(Photo Credit: Will Bullas)Last Monday, a New Jersey district court judge denied a motion for preliminary injunction brought by the owner of three Northern New Jersey liquor stores named ?Wine King? against a Southern New Jersey liquor store that is also using the name ?Wine King...
Prof. Randazza explains Ornamental Use vs. Trademark Use as only he can
Posted on March 13, 2008I?ve written previously about trademark applicants who seemingly confuse ornamental use with trademark use. (See prior posts on GIRLICIOUS, the "Smiley Cookie," and ALASKA GROWN.) But I particularly enjoyed reading Prof. Marc Randazza?s own take on this common misunderstanding by trademark applicants in his blog post yesterday (link here) on The Legal Satyricon with respect to the pending intent-to-use trademark application for the mark COCKAHOLIC as well the pending opposition filed by a woman who claims prior user rights for having already used the same mark on T-shirts...
A Trademark Battle of the Brains
Posted on March 12, 2008Exodus Film Fund I, LLC (?Exodus?), under the name Exodus Film Group, is the producer of an animated motion picture titled ?Igor? scheduled to be released in October 2008. One of the characters created by Exodus in connection with the movie is ?Brian the Brain? (pictured below), described as ?a scientific lab experiment consisting of a brain floating in a jar filled with liquid that sits on top of a base, who is frustrated because the label of the jar reads ?Brian? instead of ?Brain,? hence the name ?Brian the Brain...
Las Vegas Creator of HAREM BODY CHAIN Files Trademark Infringement Lawsuit Against eBay Competitor
Posted on March 07, 2008On March 4, 2008, Trinity's Jewelry LLC filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against Inquisition Tattoo, Inc. and its husband and wife owners, Tatiana Metaxa (aka Tatiana Eivin or Tatiana Metaxa-Rosenfeld) and Michael Metaxa (collectively, the "defendants")...
Motorola loses bid to federally register 911 Hz ?chirp? sound as a trademark
Posted on March 06, 2008John Welch?s The TTABlog today wrote about one of my favorite subjects ? sound trademarks (see my prior post here regarding a sound trademark registration by Nokia).The Trademark Trial and Appeals Board upheld an opposition filed by Nextel Communications of an application by Motorola to register ?an electronic chirp consisting of a tone at 911 Hz played at a cadence of 25 ms ON, 25 ms OFF, 25 ms ON, 25 ms OFF, 50 ms ON? as a trademark for two-way radios...
Second Circuit rejects Ralph Lauren?s evidentiary appeal in trademark infringement lawsuit against the United States Polo Association
Posted on March 05, 2008The U.S. Court of Appeals for the Second Circuit yesterday rejected the appeal by the owner of the famed Ralph Lauren brand to overturn a district court decision of non-infringement of three out of four trademarks used by the United States Polo Association...
Second Circuit renders final decision in BUKHARA ?famous marks doctrine? appeal ? Is the U.S. Supreme Court next?
Posted on March 01, 2008In a decision that will undoubtedly come as no surprise to followers of this case, the United States Court of Appeals for the Second Circuit affirmed a New York district court?s decision to grant summary judgment in favor of the defendants on the issue of unfair competition under New York state law...
Competing fitness clubs in trademark battle over being NAKED
Posted on February 29, 2008The ?Naked Cowboy? isn?t the only ?naked? trademark dispute going on these days.DB 85 Gym Corp. (?DB85?) is the owner of David Barton Gym, a luxury health club and spa with locations in New York City, Miami, and Chicago. DB85 also owns the registered word mark LOOK BETTER NAKED (for hats and activewear goods and for health club services) which was registered on August 5, 1997, and which claims first use in commerce back to June 1992...
Nuvio file trademark infringement lawsuit against Garmin over NÜVIFONE
Posted on February 28, 2008Various news stories reported on the press release issued today by Nuvio Corp. (?Nuvio?), an internet telephone company based in Overland Park, Kansas, announcing that it had filed a trademark infringement lawsuit against GPS maker Garmin Ltd. (?Garmin?)...
Chicago Cubs go after clubs watching Wrigley Field home games from nearby rooftops
Posted on February 26, 2008On February 15, 2008, Chicago National League Ball Club, L.L.C., the owner of the Chicago Cubs Major League Baseball team (the ?Cubs?), filed a trademark infringement lawsuit in the U.S. District Court for the Northern District of Illinois against Thomas Gramatis as well as two companies owned and controlled by Gramatis -- Wrigley Rooftops III, L...
Seventh Circuit affirms District Court dismissal of trademark infringement dispute between JAPONAIS restaurant founders
Posted on February 25, 2008On February 22, 2008, the Seventh Circuit Court of Appeals affirmed a district court?s dismissal of a derivative trademark infringement claim brought by a co-founder of the Chicago restaurant Japonais against his fellow co-founders using the Japonais name and trade dress at additional restaurant locations outside Chicago...
District Court finds money clip seller liable for Trademark Infringement based on Initial Interest Confusion
Posted on February 21, 2008What is a blogger to do when there is nothing interesting to blog about? Simple -- link to somebody's else blog posting.The E-Commerce and Tech Law Blog had a post today (link here) about a California district court decision last week finding trademark infringement based on "initial interest confusion" -- a topic of interest to many in trademark circles...
Ninth Circuit amends decision in Jada Toys v. Mattel to apply current dilution law and likelihood of dilution standard
Posted on February 21, 2008The Ninth Circuit Court of Appeals issued an amended opinion today in the appeal of Jada Toys v. Mattel, Inc., No. 05-55627 (9th Cir. February 21, 2008). For good summaries of the original decision, see blog posts by Seattle Trademark Lawyer and Filewrapper Blog...
A trademark dispute over Cheesecake
Posted on February 18, 2008On February 13, 2008, Cheesecake Factory, Inc., a New Mexico corporation doing business in New Mexico as ?Dee?s Cheesecake Factory? (?Dee?s Cheesecake?), filed a lawsuit against The Cheesecake Factory, Incorporated (?TCFI?), the owner of the restaurant chain ?The Cheesecake Factory,? in the U...
Yoko Ono speaks out about about LENNON service mark cancellation proceeding
Posted on February 16, 2008I wrote on Wednesday (blog post here) about the cancellation proceeding initiated by Yoko Ono against Lennon Murphy, a heavy-metal musician who performs under the name LENNON and even registered the mark with the U.S. Patent and Trademark Office ("PTO")...
The Naked Cowboy Sues Over Cartoon M&M Ad Featuring His Likeness
Posted on February 15, 2008Numerous news stories over the past few days (New York Post, CNN, and MSNBC) summarize very well the trademark infringement lawsuit filed by Robert Burck (better known as "The Naked Cowboy") against Mars, Incorporated, the makers of M&Ms candy, and Chute Gerdeman, Inc...
Yoko Ono seeks to cancel musician's registration of LENNON service mark
Posted on February 14, 2008TMZ.com reports on the effort by Yoko Ono to stop heavy-metal artist Lennon Murphy from performing her music under the name Lennon.Murphy obtained a registration for the mark LENNON (for musical sound and video recordings and for entertainment services in the nature of live musical performances and providing online performances and information) on January 21, 2003 (claiming first use in commerce back to June 1997)...
Las Vegas? World Market Center embroiled in another trademark battle over WORLD JEWELRY CENTER
Posted on February 13, 2008After my lengthy post yesterday, I am opting for a more succinct post today.I previously wrote about the lawsuit between the Las Vegas-based World Market Center (?WMC?) and Cost Plus World Market over the mark WORLD MARKET CENTER (link here). That post was based on an article authored by Las Vegas Business Press writer Valerie Miller...
Tenth Circuit affirms district court decision favoring 1-800-SKI-VAIL against Vail Ski Resort Owner
Posted on February 12, 2008On February 7, 2008, a divided three judge panel of the Tenth Circuit Court of Appeals upheld a district court?s decision in favor of Vend-Tel-Co, Ltd. and Eric A. Hansen (together, ?VTC?), the owner of the vanity phone number "1-800-SKI-VAIL," in a service mark infringement lawsuit brought by Vail Associates, Inc...
Agri Beef subsidiary wins summary judgment of no infringement in trademark infringement lawsuit brought by Allen Brothers over AB mark.
Posted on February 08, 2008On March 8, 2006, Allen Brothers, Inc. (?Allen Brothers?) filed a trademark infringement lawsuit in the U.S. District Court for the Northern District of Illinois against AB Foods LLC (?AB Foods?) alleging that AB Foods? use of the mark ?AB? in connection with the sale of meat products infringed Allen Brothers common law trademark rights to the ?AB? mark in connection the same goods in violation of §43(a) of the Lanham Act (15 U...
No Risqué evidence to be found in trademark infringement lawsuit over RISQUE VIDEO
Posted on February 06, 2008On February 5, 2008, Risque Video, Inc. and Top Ten Video, Inc. filed a trademark infringement lawsuit in the U.S. District Court for the Eastern District of Pennsylvania against Super Video Plus, Super Video Plus of Blackwood, and Gary Koobrick (together ?Koobrick?)...
Second Circuit affirms lower court decision of no trademark infringement by American Express over ?MY LIFE. MY CARD.?
Posted on February 04, 2008The Second Circuit handed down a per curium decision today which underscores the distinction between copyright and trademark law. See American Express Co. v. Goetz, Appeal No. 06-2184 (2nd Cir. February 4, 2008) (per curiam). A copy of the decision can be downloaded here...
NFL remains aggressive over SUPER BOWL while Patriots go for 19-0 THE PERFECT SEASON
Posted on February 02, 2008Every year as the date of the Super Bowl draws near, it has become a perennial favorite topic in the trademark law arena to discuss the National Football League?s (?NFL?s?) notoriously aggressively enforcement of its SUPER BOWL trademark.Numerous stories in the past (see, e...
The TTAB?s insane decision to uphold Vanity Fair?s opposition against Vanity Insanity
Posted on January 31, 2008John Welch?s write-up on The TTABlog reminds us that when it comes to dealing with the TTAB, ?We're not dealing with the real world here.?He summarizes the "insanity" behind the decision by the Trademark Trial and Appeal Board ("TTAB") to sustain oppositions filed by Vanity Fair magazine against pro se applicant Kelly C...
Trivia game maker sues Sony over Buzz! video game
Posted on January 30, 2008The internet was buzzing (pun intended) today about the news of a trademark infringement lawsuit filed by a Carlsbad, California-based electronic trivia game company against Sony, the maker of a series of trivia video games for the Sony PlayStation 2 under the name ?Buzz!? Nearly all of the news reports of the lawsuit cite back to an article from Gamespot...
Vegas Condo-Hotel Management Company Sues Donald Trump for $1 Billion
Posted on January 29, 2008On January 26, 2008, Nights at Vegas, Inc. (?NAV?), a Vegas-based real estate property management company, filed a lawsuit against Donald Trump, Trump Ruffin LLC, and Trump Ruffin Tower I LLC (together ?Trump?) seeking declaratory relief of non-infringement of trademarks as well as $1 billion in damages for alleged anti-trust violations, false promotion, and unfair competition...
Lulu dismisses trademark infringement lawsuit against Hulu
Posted on January 27, 2008As expected, the trademark infringement lawsuit between Lulu and Hulu (previously blogged here and here) has apparently been settled with no monetary compensation changing hands. Bob Young, the outspoken founder of Lulu, apparently decided last month to dismiss the lawsuit voluntarily after Hulu representatives indicated to the court that it would not compete in the same arena as Lulu (namely, the business of distributing self-published works online)...
Fashion Maven Diane von Furstenberg Sues Target for Copyright and Trademark Infringement Over ?Spotted Frog? Design
Posted on January 25, 2008The media was abuzz today about the lawsuit filed against Target Corp. (?Target?) by Diane von Furstenberg Studio, L.P. (?DVF?), the limited partnership established by Diane von Furstenberg in 1997 to sell her ?signature? line of dresses, over alleged copies of her famed ?wrap dresses? being sold at Target stores...
Company refiles trademark infringement lawsuits against two companies over Bob Marley name and likeness
Posted on January 25, 2008While I?m not really a fan of the late reggae musician Robert Nesta Marley (aka Bob Marley), a lot of people are and this fame has made the late musician?s name and likeness very valuable to his heirs.A company named Fifty-Six Hope Road Music, Ltd. (?Fifty-Six Hope Road?), a Bahamas International Business Company which is owned and operated by Marley?s 12 children, owns the intellectual property rights to Bob Marley?s name and likeness...
Ninth Circuit gives copier companies second shot at Ikon/GE in complaint alleging false statements, antitrust violations, and racketeering
Posted on January 23, 2008The Ninth Circuit today reversed a district court decision to grant a motion to dismiss a complaint brought by Newcal Industries, Inc., Pinnacle Document Systems, Inc. and Kearns Business Solution, Inc. (together ?Newcal?) against Ikon Office Solution and General Electric Corporation (together ?IKON?)...
Clint Eastwood files lawsuit over ?The Eastwood? home theater chairs
Posted on January 23, 2008On January 16, 2008, Clint Eastwood filed a lawsuit in the U.S. District Court for the Central District of California against Palliser Furniture, Ltd, Palliser Furniture Corp. and several John Does (together ?Palliser?) over a line of home theater chairs manufactured and sold by Palliser under the name ?The Eastwood...
A Registered Trademark on CYBERLAW?
Posted on January 21, 2008Eric Goldman?s Technology & Marketing Law Blog had a good post last Friday (link here) on the recent trademark application filed by a District of Columbia intellectual property attorney named Eric Menhart to register the mark CYBERLAW for legal services...
Play N Trade Franchisor Sues Former Franchisee for Trademark and Trade Dress Infringement
Posted on January 18, 2008On January 17, 2008, Play N Trade Franchise, Inc. (?PNT?) filed a lawsuit in the U.S. District Court for the District of Nevada against Henry Mangio ("Mangio") and Henrob Inc.(d/b/a Trade n Play). See Play N Trade Franchise, Inc. v. Mangio et al, Case No...
Car Sticker Parody of famous INTEL INSIDE logo
Posted on January 17, 2008Here is my pick for favorite trademark parody of the year (so far, anyway). I spotted it on the back of car today and it made me laugh (and definitely made me think of Intel?s famous INTEL INSIDE trademark ? although for the record I was not confused by it)...
SCRABBLE makers want to scrabble "Scrabulous"
Posted on January 16, 2008The hot trademark story du jour was the news that the two toy companies that own the rights to the SCRABBLE game have sent a letter to Facebook, the popular online social networking website, requesting that it remove a popular online application named Scrabulous that resembles the famed board game...
Tobacco company ordered to pay attorney's fees for vexatious trademark infringement lawsuit
Posted on January 15, 2008I?ve written before (link here) about the aggressiveness of tobacco companies in wielding their valuable trademarks to stop the sale of counterfeit cigarettes.The Rocky Mountain News ran a story yesterday by John Ensslin (link here) about one such action brought by one tobacco company against an Ethiopian immigrant...
Nathan's Famous Hot Dogs in Hot Water Over Over ?NOT DOGS?
Posted on January 14, 2008On January 4, 2008, Northern Soy, Inc. (?Northern Soy?) filed a trademark infringement lawsuit against Nathan's Famous, Inc. (?Nathan?s?) in the U.S. District Court for the Eastern District of New York. See Northern Soy, Inc. v. Nathan's Famous, Inc., Case No...
An "ALASKA GROWN" trademark dispute
Posted on January 13, 2008An Alaska Superior Court judge has ruled against an Alaskan farm organization in a dispute between the State of Alaska and the organization over the right to print the ALASKA GROWN logo (the ?Logo?) on T-shirts and other clothing items. See State of Alaska, Dept...
Barack Obama faces trademark infringement threat over ?Change Rocks? campaign slogan
Posted on January 10, 2008In 2004, Stefan Doyno, currently a 19-year-old student at SUNY-Buffalo, came up with an idea for jewelry with interchangeable stones. As he states on his Change Rocks website, he got the idea for the ring after creating a homemade gift for his mother: "I wanted to create a high-quality, yet affordable ring that women could change to match what they were wearing or how they were feeling...
Proctor & Gamble Sues Private-label Distributor for Trade Dress Infringement over Herbal Essences
Posted on January 09, 2008The Procter & Gamble Company ("P&G") has a history of aggressively enforcing its trademark and trade dress rights, especially against companies that create and distribute "private-label" products to retailers that are meant to compete with P&G products...
Jerry Seinfeld and wife Jessica face copyright infringement, defamation and trademark infringement lawsuit over cookbook
Posted on January 09, 2008On January 7, 2007, Missy Chase Lapine (?Lapine?) and The Sneaky Chef, Inc. filed a lawsuit in the U.S. District Court for the Southern District of New York against Jerry Seinfeld and Jessica Seinfeld for copyright infringement, defamation, and trademark infringement...
A Trademark Lawsuit with a lot of ?Moxie?
Posted on January 04, 2008On December 18, 2007, Moxie Java International, LLC (?Moxie Java?) filed a declaratory judgment action in the U.S. District Court for the District of Idaho against Cornucopia Beverages, Inc. (?Cornucopia?) over the right to use the term ?Moxie.? See Moxie Java International, LLC v...
Bellagio Files Trademark Infringement Lawsuit Against Florida Condo Developer
Posted on January 04, 2008On December 31, 2007, Bellagio, LLC (?Bellagio?), the owner of the world-famous Bellagio hotel and casino in Las Vegas, filed a trademark infringement lawsuit in the U.S. District Court for the Middle District of Florida against Bellagio Harbor Village Master Association, Inc...
Boston Brouhaha Between Big Sister and Big Brothers Big Sisters
Posted on January 03, 2008The Boston Globe ran a story today (link here) about a trademark infringement lawsuit filed in the U.S. District Court for the District of Massachusetts on December 28, 2007, by the Big Sister Association of Greater Boston (?Big Sister?) against Big Brothers Big Sisters of Massachusetts Bay (?Big Brothers?)...
Fourth Circuit Rules that District Court can compel Rule 30(b)(6) subpoena of foreign corporation
Posted on January 02, 2008Filewrapper.com and John Welch?s The TTABlog both have good postings on the Fourth Circuit?s decision last week that a foreign corporation can be compelled to answer a Rule 30(b)(6) deposition subpoena arising out of a TTAB opposition issued pursuant to 35 U...
Ninth Circuit Upholds Ebay?s Victory Over Use of ?Search Smart? on Website
Posted on December 28, 2007The Ninth Circuit today upheld a lower court?s decision finding that eBay, Inc?s (?eBay?s?) use of the name ?Smart Search? on its Internet auction website did not infringe on the registered trademark SMARTSEARCH held by Applied Information Sciences Corp...
?Reverse Cybersquatting? ? the dark side of the Anticybersquatting Consumer Protection Act
Posted on December 27, 2007In a previous posting (link here), I wrote about a flurry of trademark infringement lawsuits filed by 3700 Associates, LLC (?3700 Associates?) ? the developer of the Cosmopolitan Resort & Casino in Las Vegas ? against various named defendants. Based on the named defendants in one of the complaints, 3700 Associates appeared to be going after domain registrants buying up domain names that were similar to its THE COSMOPOLITAN RESORT & CASINO mark for which it has two recently received registrations (word mark and stylized mark covering real estate services featuring condominiums) as well as two pending applications (word mark and stylized mark covering vacation time shares, casino services, and resort hotels)...
Johnson & Johnson gets early Christmas gift from Third Circuit in its Splenda® trade dress infringement lawsuit.
Posted on December 25, 2007On Monday, December 24, 2007, the Third Circuit Court of Appeals held that McNeil Nutritionals, LLC (?McNeil?), the Johnson & Johnson division that makes Splenda® artificial sweetener (a brand of the artificial sweetener, sucralose), can get a second chance at obtaining a preliminary injunction against Heartland Sweeteners LLC and Heartland Packaging Corp...
Trademarking Christmas -- Is Nothing Sacred?
Posted on December 24, 2007A nice Christmas-related trademark story courtesy of The Huffington Post (link here), which writes about the following Christmas themed trademarks.The first two are held by Liberty Counsel (both for promoting public awareness of the legal issues relating to religious celebrations):HELP SAVE CHRISTMAS I (heart) CHRIST MAS (and design)The other mark mentioned is MERRY CHRISTMAS...
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How to collect a personal loan from a spouse?
You local court will probably have someone to offer you some assistance as you p...
How to make a landlord honor an option to buy provision in the lease (OH)?
Most leases are written as a one year agreement, if neither party elects to form...
If my stepmother goes on Medicaid, can they take my father's house and assets if they have been separated for many years but are still legally married (NJ)?
if medicaid up there is the same as in sc, they willnot take the houses. medicai...
Our landlord just put our rental on sale. We have been excellent tenants and have never had issues with rent payments. We do not want realtors bringing clients into our home when we are not present. Recieved a letter fro
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