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Trademark Law Summaries
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Jury Awards Adidas a Record-Setting $305M in Damages, But Payless Fights for Reversal
Adidas America, Inc. and Adidas-Salomon AG v. Payless Shoesource, Inc.
No. 01-CV-01655-RE,
U.S. District Court for the District of Oregon, 05/06/2008
Holding: In this action for trademark infringement and dilution under the Trademark Act of 1946 and deceptive trade practices under state laws, a nine-person jury issued a verdict in favor of shoemaker Adidas and against shoe retailer Payless. Specifically, the jury before the U.S. District Court for the District of Oregon unanimously awarded Adidas AG's' U.S. subsidiary $30.6 million in actual damages, $137 million in punitive damages and $137 million in Payless profits for a total of $304.6 million. The award was for infringing Adidas’ three-stripe trademark and shoe styles, aggravated by a finding of malice and reckless disregard of Adidas’ rights. A week after the verdict was issued, defendant Payless filed at least three motions that sought to overturn the adverse ruling, including a motion for judgment as a matter of law or new trial, allegedly on the ground that Adidas failed to prove actual damages and willfulness. More...
Princess Paper And Sysco Settle "Imperial" Trademark Dispute
Princess Paper, Inc. v. Sysco Corp.
DOCKET NUMBER: 06CV03249(MHP), 2007 WL 4624402,
U.S. District Court for the Northern District of California, 12/03/2007
Holding: In this trademark dispute involving the “Imperial” mark, the parties entered into an amicable settlement after bench trial. Specifically, plaintiff registrant (Princess Paper, Inc.) agreed that it would change its logo to make it different from the font used by defendant Sysco Corp, while defendant undertook to bear the cost of replacing and shipping plaintiff’s printing plates. Part of the settlement was plaintiff agreeing to limit its business in which the “Imperial” mark would be used to paper product conversion, i.e., converting bulk paper from paper manufacturers for packaging into their respective individual wrappings. Further, plaintiff undertook to confine the use of the mark to certain products, and only in the western states of California, Oregon, Utah, Nevada, Arizona, and Texas. For its part, defendant Sysco Corp. undertook to place the name “Sysco” on the outer portion of cartons on which the “Imperial” mark would appear. Finally, defendant gave its consent to the restoration of plaintiff’s trademark registration as a concurrent use registration, with Sysco to be named as a concurrent user. Other than the cost of manufacture and shipping of the new printing plates, all to be paid by Sysco Corp. to Princess Paper, Inc., no financial consideration was involved in the settlement. More...
721 Bourbon, Inc. v. Promotional Energy Products, LLC
DOCKET NUMBER: 07CV02021(SVW), 2007 WL 4976557,
United States District Court, Central District of California, Western Division, 08/29/2007
Holding: In this infringement suit involving the trademarks “Hand Grenade” and “Grenade” and the service mark, “Home of the Hand Grenade,” defendants agreed to a consent decree granting a permanent injunction against any infringing activity by defendants. Defendants further agreed to assign domain names to plaintiff and pay $10,000 in attorney fees. More...
Unzipped Apparel, Inc. et al. v. Sweet Sportwear LLC, et al.
Case No.: BC 319612, 2007 WL 1557211,
Superior Court of California, 04/12/2007
Holding: The jury issued a verdict in favor of plaintiff on each cause of action, and denied defendants’ counterclaims. Plaintiff’s causes of action consisted of breach of contract, breach of a management services agreement, breach of a supply agreement, breach of fiduciary duty, infringement on a federally registered trademark and conversion. Specifically, the jury awarded the sums of $45,000,000 for compensatory damages, and $5,000,000 for punitive damages, for a total award of $50,000,000. The jury denied defendants’ counterclaims for breach of contract on a promissory note worth $11,000,000, breach of management agreement, breach of an amended supply agreement, and breach of an amended distribution agreement. More...
Main Auto Parts Inc. v. Dubord
DOCKET NUMBER: VG04186782, 2008 WL 496476,
California Superior Court, Alameda County, 01/28/2008
Holding: In a case involving a landlord's forcible take over of a business location and the trade name, "Main Auto Parts," a plaintiff's verdict was issued by the jury. The plaintiff was awarded $788,600 for infringement of trade name, conversion, unfair competition, embezzlement, and unjust enrichment; $7,962 for forcible entry; and a total of $750 in punitive damages. The total award in favor of plaintiff was $797,312. 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
