Reports on trademark law developments from Seattle and beyond. Covers trademark infringement, dilution, cybersquatting, right to publicity, domain name disputes, and the like, with an emphasis on happenings in the Seattle area and Ninth Circuit.
By Michael Atkins
Posted on December 02, 2013
Trademark dilution is a creature of statute.
As incorporated in the federal Lanham Act, it prohibits a later-adopter from using a trademark that is likely to dilute the earlier-adopter’s famous trademark. It doesn’t matter if the later use is likely to cause confusion — the standard for trademark infringement...
Posted on November 13, 2013
A client that obtained a federal trademark registration recently asked me a good, but basic question.
Now that I’m registered, when do I use the Circle-R symbol (®)? And when do I use “Inc.”?
Once a registration issues, the trademark owner should stop using the TM symbol if it has previously made such use and replace it with the Circle-R symbol...
Posted on October 27, 2013
There’s an election today here in Buenos Aires. To an American, this is interesting for several reasons. First, the election is held on a Sunday, so everyone can vote. Second, voting is mandatory. Third, you can’t buy booze today, in order to promote clear decision-making...
Posted on October 20, 2013
STL’s been in Buenos Aires.
It’s awesome. And it’s summer!
But for this blog, a trip to Buenos Aires can only mean one thing: infringement safari. When traveling, it’s great fun to find examples of blatant trademark infringement, counterfeiting, descriptive marks, and the like...
Posted on September 24, 2013
New York reportedly is cracking down on fake online reviews.
It’s about time. Others should follow suit.
Let’s say you’re an honest business owner. Your biggest competitor is not. It writes negative reviews about your company and glowing reviews about itself...
Posted on September 09, 2013
I’m giving a talk next week about protecting your brand on social networks.
The theme of my talk is that a trademark owner’s ability to stop others from saying bad things about its brand is limited.
Just ask Kenneth Seaton, owner of the Grand Resort Hotel and Convention Center...
Posted on August 31, 2013
Now that the feds say they’re not going to challenge Washington’s statute legalizing recreational use of marijuana, does that mean you can get a federal registration for your marijuana-related trademark?
Nope. I would expect the U.S. Patent and Trademark Office to continue to deny applications for federal registration of any drug-related trademark that the feds deem to be illegal...
Posted on August 19, 2013
Plaintiff Dereck Seltzer is an artist. In 2003, he created ?Scream Icon,? a drawing of a screaming, contorted face. Since then, he moved on to other projects, but at times used his drawing to identify himself and his work?s presence by placing it on advertisements for his gallery appearances, and once licensed it for use in a music video...
Posted on August 11, 2013
Celebrities’ right of publicity claims are stronger than their Lanham Act claims, the Ninth Circuit recently found. At least in some situations.
On July 31, the court decided two cases former football players brought against Electronic Arts, Inc...
Posted on July 29, 2013
Every party filing a new trademark lawsuit must complete “Form AO 120,” titled, “Report on the Filing or Determination of an Action Regarding a Patent or Trademark.”
The form asks the plaintiff to provide information about the trademark at issue in the suit, including its “date...
Posted on July 15, 2013
Abercrombie & Fitch beat the rap.
It made fun of Jersey Shore star Michael “The Situation” Sorrentino by selling shirts that used the phrase “The Fitchuation.”
Sorrentino and his company, MPS Entertainment, sued Abercrombie for trademark infringement...
Posted on July 03, 2013
Again from the New York Times, a good look at trademark infringement lawsuits involving Ivy League schools.
The article features a lawsuit Yale University recently filed against Yale Academy, a SAT test prep school. Yale Academy said it chose its name by combining the names of its owners, Mr...
Posted on July 01, 2013
The New York Times ran a disturbing story on Thursday: “Counterfeit Food More Widespread Than Suspected.”
That’s right. Counterfeit food.
The article talked about how a Russian gang faked vodka. It put booze in “genuine vodka bottles with near-perfect counterfeit labels and duty stamps,” which they sold in stores in England...
Posted on June 10, 2013
One of the things a client gets when he hires a lawyer is loyalty. Undivided loyalty.
That means the lawyer can’t use things he learns in the course of representing a client against that client in the future while representing someone else.
This principle was reflected in a recent case decided in the Central District for California...
Posted on June 03, 2013
The Ninth Circuit?s May 21 decision in U.S. v. Chen says a lot about the folks who make money selling counterfeit goods. Not surprisingly, they make money a whole lot of nasty ways.
Mr. Chen was convicted of trafficking in counterfeit Marlboro cigarettes...
Posted on May 14, 2013
A STL first: a reader’s infringement safari!
Seattle lawyer Kevin Halverson just returned from an enviable vacation to Mexico. “Warm-water surfing,” as he put it. Seriously, that right there is reason enough to practice law. I’m super-jealous...
Posted on May 12, 2013
Counterfeit goods. They were everywhere at the International Trademark Association’s annual meeting.
That’s where I was last week: in Dallas, meeting with trademark colleagues from around the world. There were 9,500 of us. And a lot of counterfeit goods...
Posted on May 10, 2013
Costco advertised some rings in its store as being “Tiffany” rings.
Problem is, Tiffany didn’t make them.
Costco says it wasn’t confusing anyone. It was just describing the setting style, which it says is known as a “Tiffany” setting...
Posted on April 28, 2013
Newsboys, Inc. v. Warner Music Inc., illustrates that similar marks paired with similar goods or services may not create a likelihood of confusion.
The secret is enough of a difference in the goods or services.
Plaintiff’s mark is NEWSBOYS. Defendants’ mark is NEW BOYZ...
Posted on April 23, 2013
Folks who talk with a lawyer for the first time often wonder, “Is this confidential?”
I know they wonder it, because they often wonder it out loud.
The answer is yes. Even if you haven’t signed anything, or paid your lawyer anything, what you tell your lawyer in that first phone call or during that first meeting is completely confidential...
Posted on April 20, 2013
It’s always fun to find examples of trademark infringement when traveling.
It was harder than usual when I was in Spain. Only two examples come to mind: a knockoff of a Starbucks logo and the fairly ubiquitous “Women’Secret” lingerie stores...
Posted on April 16, 2013
I heard this story during my first day in Spain.
There’s a worldwide problem with labeling fish.
You think you’re ordering something tasty and sustainable, and that’s what you pay for when the bill comes. But it turns out what you’re served is a lower-quality fish, or one that’s not ecologically sound...
Posted on April 02, 2013
Hola from Madrid!
Still hard at work, but I decided to take the show on the road for a couple weeks.
Not at all why I’m here, but trekking around I couldn’t help but note what appears to be Madrid’s intellectual property office.
I also had to note Madrid’s trademark, the bear and the madro?o tree...
Posted on March 26, 2013
It’s now possible to search Washington trademark registrations for free.
The Washington Secretary of State’s digital archives have added trademark records to its searchable online database.
Start with the digital archives home page. Select “Trademark Records” from the dropdown menu under the “Search by Keyword” or “Detailed Search” options, enter the search criteria, and click the “Search” button...
Posted on March 19, 2013
We can all learn something from MARCH MADNESS.
There’s no profit in trying to register someone else’s trademark.
Check it out. The NCAA owns a registration for MARCH MADNESS. Actually, a bunch of them. This one’s for “Enterertainment in the nature of basketball tournaments between college teams,” with a first-use date of March 31, 1982...
Posted on March 04, 2013
I’m not much of an insurance guy, but these cases don’t come along too often, so they’re interesting when they do: courts interpreting insurance policies as they relate to coverage for trademark infringement.
The underlying dispute arose out of a trademark infringement complaint that AcademyOne, Inc...
Posted on February 04, 2013
The Pepsi Challenge: Made possible by comparative fair use
We covered fair use today in my trademark class, and it occurred to me I haven’t talked about it much here.
Fair use, in all its flavors, is a defense to trademark infringement and a host of other forms of trademark wrongs...
Posted on January 31, 2013
You can’t call it the Super Bowl.
Or that’s what the NFL would have you believe.
Really, that’s a joke. The game’s called the Super Bowl, and if you want to refer to the Super Bowl, you don’t have to call it the “Big Game...
Posted on January 23, 2013
The Sonics haven’t returned quite yet.
And neither have their trademarks.
When owner Clay Bennett moved our beloved team to Oklahoma City, he took the basket of SEATTLE SUPERSONICS trademarks with him. In an agreement that settled the City of Seattle’s lawsuit intended to prevent the move, Mr...
Posted on January 14, 2013
This is awesome.
Pacific Northwest soccer fans have been up in arms about Major League Soccer’s recent application to register CASCADIA CUP as a trademark with the Canadian Intellectual Property Office — Canada’s counterpart of the U...