Trademark Law Summaries
Page 1 of 13 of Trademark Law Summaries » New Judicial Opinions 1 2 3 > Last »
E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc
No. 06-56237,
U.S. Court of Appeals for the Ninth Circuit, 11/05/2008
Holding: The U.S. Court of Appeals for the Ninth Circuit has dismissed a trademark lawsuit by owners of the East Los Angeles strip club"The PlayPen" against Rockstar's video game depiction in "Grand Theft Auto" of a similar strip club called "The Pig Pen," located in the game's fictional city of East Los Santos. In its complaint, ESS alleged that Rock Star’s use of the PlayPen logo and look without their permission was likely to confuse customers as to whether ESS endorsed or was associated with the virtual strip club. Citing court precedent, the Ninth Circuit held that the First Amendment protected Rockstar from liability. It reasoned that the video game’s similarity in the look and feel to “The Play Pen” has some artistic relevance to Rockstar’s artistic goal, which was to develop a cartoon-style parody of East Los Angeles. The Ninth Circuit added that nothing indicated that the buying public would reasonably have believed that ESS produced the video game or that Rockstar operated a strip club. It is true that a player can enter the virtual strip club in Los Santos, but ESS failed to provide any evidence that the setting is anything but generic. On the basis of the foregoing, the Ninth Circuit affirmed the district court's grant of summary judgment.
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Pfizer Inc. v. Sachs
No. 08 Civ. 8065 (WHP),
U.S. District Court for the Southern District of New York, 10/08/2008
Holding: In this trademark infringement suit, the U.S. District Court for the Southern District of New York restrained the use or display of Viagra marks in a condom and missile campaign promoted by defendants Arye Sachs and JetAngel.com. Plaintiff Pfizer Inc. brought this action in response to defendants' launch of a "Voter Awareness Program" throughout major U.S. cities, featuring Pfizer's "Viagra" and "Viva Viagra" marks on defendants' jet cockpits and condoms with the images of presidential candidates Barack Obama and John McCain in an effort to encourage people to vote. Applying the eight factors cited in a court precedent, such as defendants' bad faith and strength of the marks, the district court found the defendants' use of the Viagra marks created a likelihood of confusion. Accordingly, Pfizer was able to satisfy the requirements for a preliminary injunction with regard to defendants' use of the marks.
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Auction Mgmt. Solutions, Inc. v. Manheim Auctions, Inc.
No. 1:05-CV-0639-RWS,
U.S District Court for the Northern District of Georgia, 09/30/2008
Holding: The U.S. District Court for the Northern District of Georgia dismissed a trademark infringement suit over a wholesale auction company's OnLine RingMan service mark. In this case, plaintiff Auction Management Solutions, Inc. (“AMS”) sued defendant Manheim Auctions, Inc. (“Manheim”), claiming that Manheim improperly used both a confusingly similar variant of AMS’ marks OnLine RingMan, and RingMan in various forms - including GM OnLine RingMan, RingMan, and RingMan Simulcast - to identify Manheim’s online auction system. After reviewing the entire record, the district court concluded that AMS failed to show evidence of a likelihood of confusion. Specifically, AMS did not present studies or surveys assessing confusion, nor did it alleged that there were any customers or prospective customers who experienced any potential confusion. Because AMS disclaimed exclusive rights to the individual term “ringman," the district court concluded that plaintiff’s claim of infringement with regard to Manheim's use of the term “ringman” ultimately should fail. In sum, based on the absence of any evidence of wrongful conduct or likelihood of confusion, the district court granted Manheim’s motion for summary judgment.
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United States v. Able Time
No. 06-56033,
U.S. Court of Appeals for the Ninth Circuit, 09/25/2008
Holding: In this case involving imported watches bearing the "Tommy" mark, the U.S. Court of Appeals for the Ninth Circuit ruled that the Bureau of Customs and Border Protection ("Customs") may impose a civil penalty under the Tariff Act upon an importer of merchandise bearing a counterfeit mark, even though the owner of the registered mark does not manufacture the same type of merchandise. Tommy Hilfiger Licensing, Inc. is the registered owner of the mark in dispute, but does not manufacture watches. Customs filed a civil penalty action against the watch importer, Able Time, Inc. ("Able"), which responded by filing a motion for summary judgment. The U.S. District for the Central District of California granted Able's motion. It reasoned that the imported watches could not be counterfeit because Tommy Hilfiger did not make watches at the time of the seizure. On appeal, the Ninth Circuit reversed. Construing the Lanham Act and the Tariff Act together, the Ninth Circuit held the imposition of a civil penalty under the Tariff Act does not require a trademark holder to manufacture or sell the same good as the goods imported with the offending counterfeit mark. The Ninth Circuit, however, remanded for the district court to determine whether (1) the mark on the watches is identical to or substantially indistinguishable from the registered mark pursuant to the Lanham Act and (2) whether the offending mark copies or simulates the registered mark pursuant to the same statute, which amounts to the traditional likelihood of confusion test for infringement.
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Schussler v. Webster
No. 07cv2016 IEG,
U.S. District Court for the Southern District of California, 09/22/2008
Holding: In this suit relating to the "Hot Dog Hall of Fame" mark, the U.S. District Court for the Southern District of California ruled that the owner of an online newsletter at www.thehotdoghalloffame.com, J. Frank Webster, had no enforceable right over this disputed mark. Plaintiff Schussler Creative, Inc. registered this mark, and filed this action for a declaration that its trademark is valid. In ruling in Schussler's favor, the district court held that since Schussler registered the mark, it is presumed valid. A defendant like Webster can rebut the presumption of validity if he used the trademark in commerce prior to Schussler’s registration of the mark. Here, Webster failed to rebut this presumption. Specifically, Webster added a “store” to his website only after the commencement of this lawsuit. Because Webster started this activity after plaintiffs registered the trademark, this activity was not “prior” use. In addition, Webster’s miscellaneous activities had not included any commercial component. An intent to eventually commercially exploit an idea is not sufficient to confer trademark rights or meet the “in commerce” requirement. On this basis, the district court granted plaintiffs' motion for summary judgment.
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Trademark Law Commentaries
Following are Trademark Law Commentaries elaborating on the significance of the most important of the Trademark Law Summaries.
Page 1 of 2 of Trademark Law Commentaries 1 2 >
Tiffany (NJ) Inc., et al. eBay, Inc.
Posted: 09/26/2008
Commentary: In its significant opinion in Tiffany v. eBay, ___ F. Supp. 2d ___, 2008 WL 2755787 (No. 04 Civ. 4607) (S.D.N.Y. , July 14, 2008) the Southern District of New York rejected an effort by renowned jeweler Tiffany to expand the reach of contributory trademark infringement. Tiffany’s theory of secondary liability would have imposed liability for trademark infringement upon web-based intermediaries whose users infringe on trademarks by selling counterfeit goods. The opinion fills an important gap in the precedent of contributory trademark infringement, but it also emphasizes that trademark law is about consumer protection, not the suppression of speech. Tiffany has filed an appeal of the decision with the U.S. Court of Appeals for the 2nd Circuit.
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Related summary: eBay Not Liable for Sale of Counterfeit Tiffany Jewelry on its Auction Site: NY District Court
Burck v. Mars, Inc.
Posted: 09/03/2008
Commentary: Robert Burck, a.k.a. The Naked Cowboy, an iconic street performer in Times Square, had the foresight to trademark his name and image. When the Mars company developed an ad campaign depicting its famous M&M candies in and around New York City, they chose to dress up one of the candies as The Naked Cowboy, although they failed to seek or obtain his permission first. Burck sued for trademark infringement, claiming false endorsement; Mars claimed fair use as a parody. Even though that big blue M&M looked nothing like Robert Burck, the M&M’s outfit, setting, and potential for consumer confusion was enough. On motions to dismiss, a federal court in New York decided that Burck’s false endorsement claims could proceed to the factfinder, as could Mars’ defense of parody. Burck v. Mars, Inc., ___ F. Supp. 2d ___, 2008 WL 2485524, No. 08 Civ. 1330 (DC), (S.D.N.Y. 2008).
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Related summary: The Naked Cowboy’s Trademark Suit Against M&M Must Proceed to Trial, NY District Court Rules
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.
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Related summary: NY District Court: Well-known Designer Can’t Use His Own Personal Name for His New Line of Clothing
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.
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Related summary: 4th Circuit: No Likelihood of Confusion Between “Chewy Vuiton” and “Louis Vuitton” Trademarks
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.
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Related summary: No Likelihood of Confusion, 11th Circuit Declares in Custom Manufacturing v. Midway Services Case
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