Trademark Law Summaries
No. 07-2440-JWL, 2007 WL 3355661,
D.Kan., 11/13/2007
Holding: In this case for trademark infringement, the U.S. district court found that defendants' practices relating to phony or removed serial number labels on plaintiff Beltronics’ trademarked radar detectors were likely to cause confusion in the marketplace concerning the source of the goods. Specifically, the re-labeling (or un-labeling, as the case may be) of serial numbers placed on the radar detectors had the effect of deceiving the public who believed they were purchasing a genuine Beltronics product along with the full bundle of services and product features that would typically accompany such a purchase. When they later learned that they did not receive the full bundle of services and product features, “their displeasure at Beltronics eroded Beltronics' good will and reputation.” The district court thus granted plaintiff’s application for a preliminary injunction seeking to enjoin the sale or offering for sale of any Beltronics goods that did not bear an original Beltronics serial number label.
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Custom Manufacturing and Engineering, Inc. v. Midway Services, Inc., et al.
No. 05-12906, 2007 WL 4165634,
Court of Appeals for the Eleventh Circuit, 11/21/2007
Holding: In this action for trademark infringement, the U.S. Court of Appeals for the Eleventh Circuit held that defendants' use and installation of modified version of trademarked circuit boards that were initially designed by plaintiff Custom Manufacturing and Engineering, Inc. ("CMEI"), and which bore plaintiff's trade name, did not create likelihood of confusion. According to the Federal Circuit, the unauthorized use of a trademark that is never perceived by anyone cannot be said to create a likelihood of consumer confusion under the Lanham Act. In this case, defendants affixed plaintiff's mark on sub-components used in water meter reading system that was marketed to apartment complex owners and managers, and not actually to plaintiff's customers. Since it was unlikely that such owners and managers would examine the circuit boards, and even if third parties might see plaintiff's trade name, confusion was unlikely. Thus, the Eleventh Circuit affirmed the district court's summary judgment rendered in favor of defendants.
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See also related commentary by Olivier A. Taillieu, Esq..
No. 05 Civ. 6615(VM), 2007 WL 2823691,
S.D.N.Y., 09/27/2007
Holding: In this suit involving the registered “Cartier” mark for watches, the U.S. District Court for the Southern District of New York found that defendant J & P Timepieces’ product bearing plaintiff Cartier’s original mark was likely to deceive the public as to its origin. In granting Cartier’s motion for summary judgment seeking liability under the Lanham Act, the court ruled that although J & P modified its watches, these products were still counterfeits of the original since defendant retained plaintiff’s marks without indicating that such alteration was made by a person other than the trademark owner itself. However, the court added, the question of whether J & P’s product alterations should mitigate the likelihood of confusion was a disputed fact that could only be resolved after trial.
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Nos. 06-CV-00729 (DLI)(RER), 06-CV-05857 (DLI)(RER), 007 WL 2480361,
E.D.N.Y.), 08/28/2007
Holding: In this case, the U.S. District Court for the Eastern District of New York held that plaintiffs’ PATSY’S PR and PATSY”S marks, used for restaurant services, were unlikely to cause confusion with defendants' earlier registration for the PATSY’S PIZZERIA mark, given that the former marks were stylized, while the latter was not. In denying defendants’ motion for summary judgment to cancel plaintiffs’ marks, the trial court found that the two parties’ trademark registrations were different since plaintiffs’ registration precluded it from using the PATSY’S mark in connection with pizza, and defendants’ restaurant was primarily known as a pizzeria. . Moreover, the court found it significant that plaintiffs' and defendants' restaurants, both of which included “Patsy's” in their names, have co-existed for nearly six decades on the island of Manhattan with only minimal confusion.
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No. 05-55627, 2007 WL 2199286,
C.A.9 (Cal.), 08/02/2007
Holding: In this appeal, the U.S. Court of Appeals for the Ninth Circuit held that a triable issue of fact existed as to whether the “HOT RIGZ” mark was confusingly similar to the “HOT WHEELS” mark. In so doing, the 9th Circuit reversed the district court’s ruling that the mark were so dissimilar that no likelihood of confusion existed as a matter of law. The 9th Circuit found that a finding based merely on dissimilarity should not preclude the need to evaluate the evidence of the other Sleekcraft factors, such as evidence of actual confusion. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979).
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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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