Trademark Law Summaries
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.
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See also related commentary by D. Dennis La, Esq..
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.
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JA Apparel Corp. v. Joseph Abboud, et al.
No. 07-Civ. 7787 (THK),
U.S. District Court for the Southern District of New York, 06/05/2008
Holding: In this infringement suit involving the “Joseph Abboud” mark, a district court permanently enjoined fashion designer Joseph Abboud from using his own name to sell, market, or even promote his new menswear clothing line called “jaz.” Specifically, the district court found that Abboud did in fact sell, convey and transfer to plaintiff JA Apparel all of his right and interest to the use of his personal name, in addition to the trademarks, trade names, and designations containing his name, for commercial purposes. On this basis, the district court found Abboud’s proposed use, in connection with his new “jaz” clothing line, would constitute a breach of a prior agreement, irrespective of whether his planned use constituted trademark use. Even in the context of good faith analysis under the “fair use” doctrine, Abboud had attempted to use that which he expressly sold to plaintiff. Consumers seeing JA Apparel’s products marked or advertised as “Joseph Abboud” or “by Joseph Abboud,” would be utterly confused as to whether the “jaz” products advertised as “by designer Joseph Abboud,” were derived from the same source. Abboud was not however restricted from identifying himself when he personally presents his line to buyers within the industry or to potential licensees, or in making personal appearances that do not relate to the sale, marketing, or promotion of goods, products, or services.
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See also related commentary by D. Dennis La, Esq..
Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research (FAIR), et al.
No. 07-4095,
Court of Appeals for the Tenth Circuit, 05/29/2008
Holding: The Court of Appeals for the Tenth Circuit affirmed a district court’s dismissal of a trademark infringement and cybersquatting suit filed by Utah Lighthouse Ministry (“UTLM”) against a parody website established by defendants-appellees Foundation for Apologetic Information and Research (“FAIR”) and Allen Wyatt (“Wyatt”). Wyatt’s website parodied that of UTLM, offering similar online publication regarding the Church of Jesus Christ of Latter-Day Saints and using UTLM’s unregistered mark “Utah Lighthouse.” Despite these similarities, the Tenth Circuit found in favor of defendants-appellees holding that UTLM failed to prove that the UTAH LIGHTHOUSE mark was protectable and that Wyatt’s use was in connection with any goods or services. Additionally, because there were sufficient differences between the content and style of the two websites to avoid the possibility of confusion, the district court properly determined that Wyatt’s website was a successful parody. On the charge that defendants-appellants violated the Anti-Cybersquatting Protection Act (“ACPA”), 15 U.S.C. § 1125(d), the Tenth Circuit again ruled in favor of defendants-appellees, stating that that they lacked a bad faith intent to profit from the use of UTLM’s trademark in several domain names linked with their website.
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North American Medical Corporation, et al. v. Axiom Worldwide, Inc., et al.
No. 07-11574, 2008 WL 918411,
Court of Appeals for the Eleventh Circuit, 04/07/2008
Holding: The U.S. Court of Appeals for the Eleventh Circuit dissolved a district court’s preliminary injunction issued in an infringement case involving the “Accu-Spina” and “IDD Therapy” trademarks. The district court earlier granted injunctive relief in favor of plaintiff-appellee North American Medical Corporation (“NAM”) in order to prohibit defendant-appellant Axiom Worldwide, Inc. (“Axiom”) from including these trademarks within meta tags on its website in influencing internet search engines. The district court was correct in finding that Axiom’s use was a use in commerce and likely to cause confusion. However, it erred in presuming that plaintiffs-appellees would suffer irreparable harm if no preliminary injunction was issued. In so ruling, the district court abused its discretion by relying solely on an erroneous presumption in making such a finding. Hence, the Eleventh Circuit remanded the case for further proceedings on the issue of irreparable harm.
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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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