Trademark Law Summaries
No. 06-3618, 2007 WL 2200477,
C.A.7 (Wis.), 08/02/2007
Holding: The U.S. Court of Appeals for the Seventh Circuit found that the use of the term “HOG” (Harley Owners Group) by Harley Davidson to refer to its motorcycle club was not a generic use of the term. Although the 7th Circuit found that the same use by Harley Davidson was generic as applied to large motorcycles or motorcycle product and services in general, when used in conjunction with the motorcycle club only, it was descriptive. As such, it was entitled to trademark protection. Hence, in Harley Davidson’s lawsuit against Top Quality Service’s use of the slogan “HOGS ON THE HIGH SEA” to sell its ocean cruises for motorcycle enthusiasts, an issue of fact remained.
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06-262 S, 2007 WL 2182128,
D.R.I., 07/31/2007
Holding: In this trademark infringement suit instituted by a toy manufacturer in connection with the use and application of the registered word “Memory” in relation to two dimensional or three dimensional matching games, the United States District Court for the District of Rhode Island denied the plaintiff’s application for the issuance of a writ of preliminary injunction on the ground that the disputed term “Memory” was a generic one which would not entitle the registrant trademark protection it sought for.
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No. 4:06cv73, 2007 WL 2029078,
E.D.Va., 07/16/2007
Holding: In this infringement suit involving the “Doraldo’s” name of a restaurant, the United States District Court for the Eastern District of Virginia ruled that there was no likelihood of confusion in the advertisements used by the former owner (defendant seller) of such restaurant. The plaintiff must be able to establish that the questioned mark is likely to cause confusion, the court held, applying the rule laid down in Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 318 (4th Cir.1992). No such confusion arose in this case. The phrases “former owner of ‘Doraldo’s’” or “original owner of ‘Doraldo’s’” in defendant seller’s advertisements used the disclaimers “former” and “original” precisely to avoid confusion. Citing the case of Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 218 (3d Cir.2005), the court explained that a party is allowed to resort to “nominative use.” This use is a permissible practice of referring to another’s mark for the purpose of making a distinction in his own product or service. For this reason, the district court dismissed the trademark infringement claim of plaintiff new owner of the “Doraldo’s” restaurant.
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2006-1234, (Serial No. 78/192,104), 2007 WL 2077813,
C.A.Fed., 07/23/2007
Holding: In this appeal from the decision of the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) which refused to register plaintiff Omega’s trademark “Aqua Terra” in Class 14, the United States Court of Appeals, Federal Circuit, affirmed the ruling of the TTAB, on the ground that the TTAB did not abuse its discretion in refusing to register such mark.
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04 C 7806, 2007 WL 2042764,
N.D.Ill., 07/11/2007
Holding: In this anti-trust lawsuit brought under the Sherman Act brought by a former licensee of trademarked headwear and apparel against the new exclusive licensee, the unincorporated association of professional football teams, and the corporation formed by the association and its members teams for the purpose of handling the licensing of the members’ merchandize, the United States District Court for the Northern District of Illinois, Eastern Division, granted the defendants’ motion for partial summary judgment, and held that defendants were incapable of committing conspiracy to violate anti-trust laws.
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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 >
