Trademark Law Summaries
Future Lawn, Inc. v. Maumee Bay Landscape Contractors, L.L.C.
No. 3:07CV1183, 2008 WL 918282,
District Court for the Northern District of Ohio , 04/01/2008
Holding: The U.S. District Court for the Northern District of Ohio ruled that defendant Maumee Bay’s telephone number bearing “720-TURF” infringed plaintiff Future Lawn’s “853-TURF” service mark. Specifically, the district court rejected for lack of basis defendant’s assertion that plaintiff’s mark was merely descriptive and generic. Plaintiff’s mark was therefore entitled to protection under the Lanham Act. Applying the eight-factor test laid down under Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville, Inc.( 670 F.2d 642, 648 (6th Cir.1982)), such as the factor of relatedness of services, the district court found that no genuine issue of fact existed as to the likelihood of confusion arising from defendant’s use of “720-TURF.” In so stating, the district court granted Future Lawn’s motion for summary judgment on its Lanham Act claim.
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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.
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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.
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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.
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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.
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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
Page 1 of 2 of Trademark Law Commentaries 1 2 >
