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Federal Circuit Affirms TTAB Dismissal of Nasalok’s Petition to Cancel Nylok Mark
Nasalok Coating Corporation v. Nylok Corporation
No. 2007-1432, 2008 WL 1700405,
Court of Appeals for the Federal Circuit, 04/14/2008
Holding: The U.S. Court of Appeals for the Federal Circuit affirmed the dismissal of Nasalok’s petition to cancel Nylok’s mark used on metal externally threaded fasteners. A district court earlier issued a default judgment of trademark infringement against Nasalok. According to the Federal Circuit, Nasalok’s subsequent filing of a petition to cancel Nylok’s trademark before the Trademark Trial and Appeal Board (“TTAB”) amounted to a collateral attack on the district court’s judgment. Allowing Nasalok to proceed with its cancellation petition would undoubtedly impair Nylok's rights as established in the infringement action. Hence, rules on defendant preclusion should serve to bar Nasalok’s claim of trademark invalidity raised in its TTAB petition. In so ruling, the Federal Circuit affirmed the TTAB’s grant of summary judgment in favor of Nylok. More...
Federal Judge Denies Monster's Plea to Dismiss "Acoustic Research" Mark Case
Audiovox Corporation v. Monster Cable Products, Inc.
No. CV 07-462,
District Court for the Eastern District of New York, 04/07/2008
Holding: The U.S. District Court for the Eastern District of New York denied a motion to dismiss an action for declaratory judgment of non-infringement and invalidity of a patent and trademark registration relating to audio speaker wires. In ruling against defendant Monster Cable Products’ (“Monster”), the district court held that Monster had inappropriately raised issues of falsity and materiality of particular statements made before the USPTO (U.S. Patent and Trademark Office). Defendant’s arguments went beyond the “four corners of the complaint,” and required courts to characterize the scope of the patent in dispute and its trademark registration. Because plaintiff Audiovox Corp. (“Audiovox”) was able to assert sufficient facts in support of its causes of action to state claims for relief, the district court ruled that dismissal of the complaint was not warranted. More...
10th Circuit Rules “1-800-SKI-Vail” Mark Does Not Infringe Ski Resort’s “Vail” Mark
Vail Associates, Inc. and Vail Trademarks, Inc. v. Vend-Tel-Co., Ltd.
No. 05-1058, 2008 WL 342272,
C.A.10 (Colo.), 02/07/2008
Holding: In this appeal, the U.S. Court of Appeals for the Tenth Circuit ruled that defendant’s vanity telephone number “1-800-SKI-VAIL” did not infringe plaintiff’s “Vail” service mark. The court found that plaintiff ski resort operator failed to demonstrate the six fact-bound factors that would establish a likelihood of confusion. Specifically, the sight, sound, and meaning of the two marks were “not irrefutably similar.” The parties’ respective services and the manner by which they market them differed in important respects. There was no evidence that plaintiff’s mark was “particularly strong.” Neither was there any indication that defendant ever intended to trade on plaintiff’s reputation. In so finding, the Tenth Circuit dismissed plaintiff’s appeal, and affirmed the district court’s judgment. More...
Ty Inc. v. Softbelly’s, Inc., et al.
Nos. 07-1452, 07-1519, 07-1782, 07-1793, 07-2401, 2008 WL 465851,
C.A.7 (Ill.), 02/22/2008
Holding: In this appeal, the U.S. Court of Appeals for the Seventh Circuit ruled that defendant's “Screenie Beanies” infringed plaintiff’s “Beanie Babies” trademark. The court found the “Screenie Beanies” computer screen cleaners to be identical in size, shape, and overall appearance to the “Beanie Babies” baby toys. While it may be true that the hang tag for “Screenie Beanies” differed from plaintiff's well-known red heart-shaped tag, “customers might well believe that plaintiff, having decided to make a screen cleaner rather than the conventional ‘Beanie Baby’ toy, had changed the tag's appearance.” Thus, defendant’s use of the name “Screenie Beanies” and the design of its product demonstrated what the court described as a “reckless disregard for the likelihood of consumer confusion.” In so finding, the Seventh Circuit affirmed the district court’s ruling of willful infringement. More...
Atlas Copco AB, et al. v. ATLASCOPCOIRAN.COM, et al.
Civil Action No. 1:07cv1208 (GBL/TCB), 2008 WL 149128 ,
E.D.Va., 01/08/2008
Holding: The U.S. District Court for the Eastern District of Virginia ruled that ATLASCOPCOIRAN.COM” and other similarly named internet domain names were confusingly similar to plaintiffs' “ATLAS COPCO” trademark. The dominant portion of each of the domain names was “ATLAS COPCO” or “ATLAS,” which defendants combined with generic terms “CASPIAN” and “IRAN." As such, there was failure to distinguish the domain names from plaintiffs’ “ATLAS COPCO” trademark. In so holding, the district court concluded that the use of infringing domain names by defendants done in conjunction with a “phishing” scam established a “bad faith intent” to profit from the “ATLAS COPCO” trademark. The district court thus issued a summary judgment in favor of plaintiffs on their in rem cyberpiracy claim brought under the Anticybersquatting Consumer Protection Act (ACPA). 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
Burck v. Mars: The Naked Cowboy Shall Ride On
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). More...
Related summary: The Naked Cowboy’s Trademark Suit Against M&M Must Proceed to Trial, NY District Court Rules
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
