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WI District Court Finds University of Wisconsin System Immune from Trademark Suit
Board of Regents of the University of Wisconsin Sys. v. Phoenix Software International, Inc.
No: 07-cv-665-bbc,
U.S. District Court for the Western District of Wisconsin, 07/15/2008
Holding: The U.S. District Court for the Western District of Wisconsin in this case regarding plaintiff's trademark "Condor" dismissed defendant's counterclaims for trademark infringement. Plaintiff Board of Regents of the University of Wisconsin System ("Plaintiff") filed this civil action for a review of the Trademark Trial and Appeal Board's decision ("TTAB") that cancelled its trademark. In response, defendant Phoenix Software International, Inc. ("Defendant") filed counterclaims for trademark infringement, among others. The district court granted plaintiff's motion to dismiss counterclaims on the ground of sovereign immunity. Specifically, the district court held that plaintiff enjoys sovereign immunity as a branch of the state and that its immunity has been neither abrogated by the enactment of the Trademark Remedy Clarification Act ("Act"), nor waived by plaintiff's participation in the federal trademark system. In addition, plaintiff did not waive its immunity by filing the present suit because its appeal could not be construed as a voluntary invocation of federal jurisdiction. More...
eBay Not Liable for Sale of Counterfeit Tiffany Jewelry on its Auction Site: NY District Court
Tiffany (NJ) Inc., et al. eBay, Inc.
No 04 Civ. 4607 (RJS),
U.S. District Court for the Southern District of New York, 07/14/2008
Holding: In a ruling that runs counter to those issued by European courts, the U.S. District Court for the Southern District of New York dismissed trademark infringement claims filed by world-renowned jeweler Tiffany against online auction site eBay, Inc., stating that Tiffany should bear the burden of policing its valuable trademarks in internet commerce. In dismissing Tiffany's charge of direct trademark infringement, the district court found that the use of Tiffany trademarks by eBay in its advertising, on its home page and in sponsored links purchased through Yahoo! and Google, is a protected, nominative fair use of the marks. With regard to the claim of contributory trademark infringement, the district court held that the standard was not whether eBay could reasonably anticipate infringement by people selling Tiffany knock-offs on its site. But rather, the standard to be applied was whether eBay kept offering its services to sellers it knew or had reason to know were infringing on Tiffany's marks. The result of the application of this standard is that Tiffany must ultimately bear the burden of protecting its trademark. Policymakers may yet decide that the law as it stands is inadequate to protect rights of owners in light of the increasing scope of Internet commerce and the concomitant rise in potential trademark infringement. Hence, the district court similarly dismissed Tiffany's charge of contributory trademark infringement. More...
First Circuit Reverses Injunction in Boston Duck’s Case, Finds that “Duck Tours” Is Generic and Descriptive
Boston Duck Tours, LP v. Super Duck Tours, LLC
Nos. 07-2078, 07-2246,
United States Court of Appeals for the First Circuit, 06/18/2008
Holding: The U.S. Court of Appeals for the First Circuit reversed a district court’s grant of preliminary injunction in this case involving the disputed term “duck tours.” Plaintiff-appellee’s Boston Duck logo consisted of a duck splashing in water, while defendant-appellant Super Duck’s logo was a cartoon parody of "Superman." Both parties operated sightseeing businesses using amphibious vehicles referred to as "ducks.” According to the First Circuit, the district court failed to consider evidence, such as articles in the media and widespread generic use of "duck" and "duck tours" by other companies providing similar services, demonstrating that the phrase "duck tour" was generic for the type of tours offered by both parties. In this regard, the First Circuit held that Boston Duck failed to establish likelihood of confusion. Accordingly, this finding meant that Boston Duck would not likely succeed on the merits of its trademark infringement claim. More...
The Naked Cowboy’s Trademark Suit Against M&M Must Proceed to Trial, NY District Court Rules
Robert Burck v. Mars, Inc., et al.
08 Civ. 1330 (DC),
U.S. District Court for the Southern District of New York, 06/23/2008
Holding: The trademark infringement suit of The Naked Cowboy, the half-naked street entertainer who performs in New York City’s Times Square, against the M&M candy-maker should proceed to trial, so ruled the U.S. District Court for the Southern District of New York. The candy company and its ad agency ran an animated cartoon advertisement on two oversized video billboards in Times Square, featuring a blue M&M dressed exactly like the guitar-playing The Naked Cowboy. But they justified their promotional campaign as a mere parody that was not likely to cause confusion. The district court however rejected such argument of defendants, stating that whether the M&M Cowboy characters were parodies of The Naked Cowboy raised factual questions that were not for the court to decide in a motion to dismiss. Further, the district court also rejected defendants’ argument that some consumers might view the M&M Cowboy characters as a part of a larger work depicting New York scenes and parodying famous New York characters. The district court reasoned that other consumers might mistakenly believe that The Naked Cowboy himself endorsed the copying of his "trademarked likeness" because the M&M Cowboy characters appear in a commercial setting (i.e., on the video billboard and inside the M&M World store). The district court accordingly denied the defendants’ motion to dismiss the trademark infringement suit. More...
Creation Seventh Day & Adventist Church Infringes the “Seventh-day Adventist” Trademark, TN District Court Finds
General Conference Corp. of Seventh Day Adventists v. McGill
No: 06-1207,
U.S. District Court for the Western District of Tennessee, 06/23/2008
Holding: The U.S. District Court for the Western District of Tennessee held that defendant’s “Creation Seventh Day & Adventist Church” infringed the “Seventh-day Adventist” trademark owned by plaintiff General Conference Corp. of Seventh Day Adventists. Although a trademark like that of plaintiffs’ becomes incontestable five years after its registration, it could still be challenged as generic, in which case the burden of proof lies on the challenger. Here, defendant failed to present sufficient evidence to overcome the presumption that such mark was not generic. The fact that two other small churches utilize the name does not establish that the relevant public does not associate it with the “mother” church. In the absence of proof, the district court could not just assume that the relevant public would view the disputed term merely as a way to refer to a person who believes that the Sabbath should be celebrated on the seventh day and that the return of Jesus Christ is imminent, and not primarily as a means of reference to a member of the plaintiffs’ church. Motion for summary judgment in favor of plaintiffs in their trademark claim was therefore warranted. More...
Trademark Law Commentaries
Following are Trademark Law Commentaries elaborating on the significance of the most important of the Trademark Law Summaries.
Page 1 of 1 of Trademark Law Commentaries
JA Apparel v. Abboud: When a Name Is More Than Just a Name
JA Apparel Corp. v. Joseph Abboud, et al.
Posted: 07/17/2008
Commentary: When clothing designer Joseph Abboud had a falling out with the new management of JA Apparel, the clothing company he had founded, he tried to start a competing clothing line called “jaz.” He planned to use his name in jaz promotions, identifying himself as the designer of the new line. One little problem – Abboud had sold the exclusive rights to the use of his name for commercial purposes to JA Apparel a few years earlier. JA Apparel sought an injunction against Abboud, seeking to prohibit Abboud from using his own name to promote any fashion line. The magistrate judge agreed, finding that Abboud had forever contracted away the rights to use his own name to promote any fashion line other than JA Apparel. Though the contract issue was decisive, the court noted that Abboud’s use of his name to promote jaz would also result in a high likelihood of confusion and therefore constituted trademark infringement as well. More...
Related summary: NY District Court: Well-known Designer Can’t Use His Own Personal Name for His New Line of Clothing
Haute Diggity Dog Court Applies Tests in Determining What a Successful Parody Is
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, L.L.C.
Posted: 02/25/2008
Commentary: The case Louis Vuitton Malletier v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007) was the first case an appellate court heard under the Trademark Dilution Revision Act of 2006 (TDRA). Though the TDRA generally favors companies like Louis Vuitton that try to protect their famous trademarks from dilution, the Haute Diggity Dog court affirmed the lower court’s decision against Louis Vuitton, finding that the defendant’s successful parody would not dilute the Louis Vuitton brand. More...
Related summary: 4th Circuit: No Likelihood of Confusion Between “Chewy Vuiton” and “Louis Vuitton” Trademarks
Custom Manufacturing v. Midway Services Case: No Likelihood of Confusion If There Is No Actual Perception
Custom Manufacturing and Engineering, Inc. v. Midway Services, Inc., et al.
Posted: 12/20/2007
Commentary: Component parts manufacturers will want to pay attention to this case. In Custom Mfrg. V. Midway et al, 508 F.3d 641 (2007), the 11th Circuit found that when there is minimal likelihood that a potential customer will see the allegedly infringing product, there is no likelihood of confusion, and therefore no infringement. The Court also narrowly interpreted the notion of who might be a potential “customer” for purposes of analysis of the “likelihood of confusion” element. More...
Related summary: No Likelihood of Confusion, 11th Circuit Declares in Custom Manufacturing v. Midway Services Case
Pebble Beach Court Examines Purposeful Direction of a Passive Website
Pebble Beach Company, A California General Partnership v. Michael Caddy, an individual
Posted: 05/30/2007
Commentary: Plaintiff Pebble Beach Company owned and operated a golf course resort in California. Defendant operated a small-business in southern England and ran a passive website located at www.pebblebeach-uk.com. Plaintiff sued for trademark dilution in the district court in California. The defendant moved for dismissal based on a lack of personal jurisdiction. The district granted the dismissal and denied Plaintiff's request to conduct jurisdictional discovery. The Ninth Circuit affirmed the district court's ruling, holding that mere ownership of a passive website that does not purposefully direct its activity at the forum cannot be subjected to personal jurisdiction there. More...
Related summary: Pebble Beach Company v. Caddy
