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Trademark Law Summaries
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Zimmer Enterprises, Inc. v. Atlandia Imports, Inc.
3:06-cv-038, 2007 WL 743800,
S.D. Ohio, 03/13/2007
Holding: Venue of declaratory judgment action is proper in Ohio, so motion to dismiss is denied, but transfer to Colorado is appropriate. More...
Jewish Sephardic Yellow Pages, Ltd. v. DAG Media, Inc.
04-CV-747 (RJD), 2007 WL 817404,
E.D.N.Y., 03/19/2007
Holding: Plaintiff failed to show that its trademark "Kosher Yellow Pages" had acquired secondary meaning. More...
Official Pillowtex LLC v. Hollander Home Fashions Corp.
06-CV-362, 2007 WL 879578,
S.D. Ohio, 03/26/2007
Holding: Plaintiff alleging false designation of origin does not need enforceable rights in the mark for the court to have subject matter jurisdiction. More...
Sly Magazine, LLC v. Weider Publications L.L.C.
Civ. 3940 (RCC), 2007 WL 1061906,
S.D.N.Y., 04/09/2007
Holding: Defendants could not be held directly or contributorily liable for infringement of the registered trademark from the date they were notified of Plaintiff's mere application for, or call to ownership of, that mark. More...
In re Reed Elsevier Properties
2006-1309, 75/530,795, 2007 WL 1086403,
Fed. Cir. , 04/16/2007
Holding: Application to register mark "LAWYERS.COM" denied as generic. 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
