Trademark

Monday, 01 November 2010 20:42

"FANTASY FEST" IN FEDERAL COURT

Written by

The Key West Tourism Development Association ("TDA") recently filed a lawsuit alleging intellectual property violations stemming from alleged unauthorized use of the mark "FANTASY FEST" by Zazzle, Inc., a California business entity.  Zazzle is the owner of the web site, zazzle.com, which according to the complaint, offers "blank" products such as t-shirts and coffee mugs that can be customized by consumers.  TDA argues that, in so doing, Zazzle facilitates and benefits from the creation of counterfeit items.  In its Complaint, TDA takes issue with Zazzle's use of meta tags, and the offering of products which feature the marks "FANTASY FEST," and "HABITAT FOR INSANITY," this year's festival theme. 

In a world where online status is determined by how many Facebook users “like” your page and how many followers you have on Twitter, what happened to GAP of North America comes as no surprise to those of us who follow the many ways in which Facebook and Twitter are changing the rules of marketing and now it seems the world of trademarks. 

Almost three months after deciding to grant summary judgment in favor of Google in Rosetta Stone Ltd. v. Google, the Eastern District of Virginia finally released its opinion articulating the reasons behind the decision.   Specifically, the Court held that Google could not be held liable for trademark infringement or dilution based on its sale of keywords utilizing Rosetta Stone’s trademarks.   The decision was a coup for Google which was absolved of liability on every count brought by Rosetta Stone.
 
In perhaps the most significant portion of the decision, the Court held that Google’s use of a trademark within a keyword was “functional” and, therefore, did not amount to infringing use.  In coming to this conclusion, the Court noted that keywords “have an essential indexing function because they enable Google to readily identify in its database relevant information in response to a web user’s query.”   This seemingly brings the Court in conflict with other decisions – most notably the Ninth Circuit’s opinion in Playboy v. Netscape  – which have rejected the defense of trademark functionality in similar contexts.   Accordingly, it will be interesting to see how, or if, the Court's interpretation of the doctrine is employed in future decisions examining the unauthorized use of trademarks in conducting internet commerce.

Robert John Burck, better known as Time Square's "Naked Cowboy", has filed a federal trademark infringement suit against another New York City entertainer known as "Naked Cowgirl".    Burck, who has registered the "Naked Cowboy" mark with the USPTO, has been serenading New York tourists while wearing only white briefs, cowboy boots, and a hat since 1997.  According to Burck, the Naked Cowgirl -- whose act also, coincidentally, entails serenading tourists while wearing only her underwear, cowboy boots, and a hat -- is causing "confusion" and may "permanent[ly] devaluat[e] . . . a real American Brand and Icon."   

The complaint, which inevitably led to multiple news stories making tongue-in-cheek references to trade "dress", legal "briefs", and "naked licensing," seeks unspecified damages and a court order blocking the Naked Cowgirl from, ostensibly, appearing in public as a semi-naked cowgirl.  The Naked Cowgirl, for her part, has cited her First Amendment rights and countered that Burck does not have "a monopoly on scantily clad guitar-playing." 

You may remember the character Dan Tanna from Vega$,

but you may not know that the character's name was based on the name of a West Hollywood, California restaurant owner named Dan Tana (used with his permission), whose restaurant, "Dan Tana's," appears below:

Wednesday, 26 May 2010 19:57

COURT RULES THAT THERE'S NO "I" IN "NFL"

Written by

In a unanimous decision released yesterday afternoon, the U.S. Supreme Court held that the National Football League (NFL) is not immune from antitrust laws and should be considered an umbrella organization consisting of thirty-two separate teams rather than a single entity. The Court's ruling will allow an antitrust lawsuit filed against the NFL by American Needle -- a clothing manufacturer -- to move forward. Writing for the Court, Justice Stevens stated that "[d]ecisions by NFL teams to license their separately owned trademarks . . . to only one vendor are decisions that deprive the marketplace of . . . actual or potential competition."

American Needle filed the suit after it was prohibited from continuing to produce branded clothing for NFL teams following the NFL's execution of a ten-year exclusive licensing agreement with Reebok. Should American Needle ultimately prevail, the structure of NFL license schemes will change dramatically and individual teams will be permitted to negotiate their own license deals.  For this reason, the decision may likego down as one of the landmark sports law and licensing decisions of the past few decades.

For more information click here.

Monday, 24 May 2010 19:56

A NEW TWIST – “HAVANA CLUB” RUM

Written by
On April 6, 2010, the District of Delaware ruled in favor of defendant Bacardi U.S.A., Inc. in a false advertising action brought by Pernod Ricard USA LLC. This was the latest development in a lengthy dispute over the right to use “HAVANA CLUB” on rum, in the United States.
 
In finding that Bacardi U.S.A.’s rum labels were neither false nor misleading, the Court pointed to two alternative interpretations regarding the scope of “geographical origin” as used in Lanham Act Section 43(a)(1)(B). One interpretation was that “geographical origin” would implicate the place of manufacture. A broader interpretation would take “geographical origin” to encompass the source of a product’s heritage or some aspect of a product’s history. The Court indicated that it reached the same result under both alternatives, due to the prominent display of the actual place of manufacture (Puerto Rico) on the labels as well as a clear demonstration of the product’s Cuban heritage (Bacardi was originally a Cuban company, and the recipe for its Havana Club rum was derived primarily from a historically Cuban recipe).
 
Wednesday, 31 March 2010 19:48

URBAN DICTIONARY SUED FOR TRADEMARK INFRINGEMENT

Written by

A Fort Lauderdale company that claims ownership of trademark rights for the term "MEANAGER" in connection with clothing has sued Urban Dictionary, an online dictionary of slang words and phrases, and another Defendant, for allegedly selling competing goods that use the term "MEANAGER".   The complaint was filed in the United States District Court for the Southern District of Florida, and is pending before Chief Judge Federico A. Moreno. 

The complaint alleges that Urban Dictionary is infringing the Florida company's trademark by using the term "MEANAGER" on articles that it sells through its website.  According to the complaint, Urban Dictionary sells articles that feature the slang words and phrases that appear on its website, and takes issue with the sale of articles bearing the term "MEANAGER".  The term has three definitions on the web site, one as a slang phrase for a mean boss, i.e. a "MEANAGER" (as a play on words for Manager); and the other two relating to teenagers that exhibit hurtful behavior (a play on words for the terms Mean and Teenager).  According to Wikipedia, another online dictionary, Urban Dictionary currently has 4.79 million definitions on its website. 

The Florida company alleges that it has promoted its mark through websites such as Facebook, Twitter, MySpace, and LinkedIn.  With the ever increasing amount of business that is done through the internet, it is no surprise that cases such as these are being filed a more rapid rate.

Tuesday, 23 March 2010 19:48

GOOGLE'S EUROPEAN VACATION

Written by

In a decision released earlier today, the European Court of Justice held that Google was not liable for the sale of AdWords to a retailer who, in turn, used the trademarked keywords in connection with the sale of counterfeit goods. The decision stemmed from Google's nearly five-year old appeal of a French decision in favor of Louis Vitton. Pursuant to the Court's holding, Google is not responsible for investigating the authenticity of a retailer's goods prior to selling its keywords. Nevertheless, with an eye toward future litigation, the Court did call for more transparency from companies such as Google with respect to the identity of sellers purchasing and using the trademarked keywords.

Read the decision here.

Thursday, 11 March 2010 19:31

HOW FAR CAN YOUR LOGO GO IN FLORIDA?

Written by
Currently in Tallahassee, State Senator Mike Fasano of New Port Richey, who is the chairman of the transportation budget committee, is drafting legislation that may allow your logo to go further than ever before in Florida. Specifically, the legislation would allow corporations to sponsor license plates and place their trademarks on the same.  The proposed legislation is being drafted to generate funds for the state and would use some of the proceeds received to give drivers who purchase the corporate tags a discount on annual registration fees. 
 
It is rumored that the legislation is being modeled after legislation passed in Texas in 2009 which began by featuring the RE/MAX logo and slogan.  It is also rumored that Disney is interested in being the first to put their trademarks on Florida license plates. Whether the legislation is passed this session, the mere consideration evidences the value of trademarks and the need to adequately protect the same.
Page 13 of 15