Trademark Law Updates

Featured Expert Legal Commentary

Chloé v. Queen Bee: Exercising Personal Jurisdiction for Infringement in Internet Transactions

By Olivier A. Taillieu and Jeffrey J. Zuber of Zuber & Taillieu

The Second Circuit recently “updated its jurisprudence” on personal jurisdiction “in the age of internet commerce,” using a long-arm statute to exercise personal jurisdiction over a foreign defendant accused of selling counterfeit goods over the Internet. In Chloé v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158 (2nd Cir.… More...

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Naked Cowboy, M&M candy Maker End Suit with a Close-Door Settlement

Burck d/b/a The Naked Cowboy v. Mars Inc.  |  No. 08- cv-1330  |  U.S. District Court for the Southern District of New York  |  11/7/2008

Holding: The Naked Cowboy, whose real name is Robert Burck, and who sued candy-maker Mars, Inc. for $6 million for dressing an animated M&M in Burck’s signature outfit and broadcasting it on a video billboard, has decided to end his lawsuit for unspecified reasons. In papers filed in the U.S. District… More...

Venture Wins $0.42M Award Against McGills Glass in First Circuit

Venture Tape Corp. v. McGills Glass Warehouse, et al.  |  No. 07-1186  |  U.S. Court of Appeals for the First Circuit,  |  8/28/2008

Holding: In this case regarding the "Venture Tape" and "Venture Foil" marks, the U.S. Court of Appeals for the First Circuit affirmed the award of about $426,486 in damages and attorney's fees in favor of Venture Tape Corp. ("Venture"), a manufacturer of specialty adhesive tapes and foils used in the stained-glass… More...

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  |  5/6/2008

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… 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  |  12/3/2007

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… 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  |  8/29/2007

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… More...

Unzipped Apparel, Inc. et al. v. Sweet Sportwear LLC, et al.

Case No.: BC 319612, 2007 WL 1557211  |  Superior Court of California  |  4/12/2007

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.… More...

Main Auto Parts Inc. v. Dubord

DOCKET NUMBER: VG04186782, 2008 WL 496476  |  California Superior Court, Alameda County  |  1/28/2008

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… More...

Earthlite Massage Tables, Inc. v. Lifegear, Inc.

No. 05CV0667 (DMS), 2007 WL 2827712  |  S.D.Cal.  |  6/26/2007

Holding: In this infringement suit over trademarks relating to massage tables, the jury issued a plaintiff’s verdict, as follows: $3,300,000.00 in compensatory damages; $148,740.00 for pre-judgment interest; $397,231.00 as payment for attorney’s fees; and cost of suit in the amount of $10,164.00. The jury made a finding that defendant Lifegear, inc.… More...

Evans v. Trimont Land Company, Inc.

No. 06CV00503(WBS), 2007 WL 4322385  |  E.D.Cal.  |  9/11/2007

Holding: In this action for declaratory relief seeking judgment of non-infringement of trademark and trade name, both parties entered into a consent judgment whereby plaintiff agreed, among other things, to refrain from “using the name, mark or symbol containing 'Aspen-Northstar.com,' 'NorthstarCA96161.com,' or anything confusingly similar” “including any name, mark or symbol… More...

Classic Foods International Corp. v. Kettle Foods Inc.

SACV 04-725 CJC (Ex), 2007 WL 2175303  |  C.D.Cal.  |  1/2/2007

Holding: In this case for trademark infringement, unfair business practice, injunction, and declaratory relief, the United States District Court for the Central District of California, Southern Division, after bench trial, rendered judgment in favor of defendant Classic Foods, and ordered the dismissal of the suit on the ground that the term… More...

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Companies Mentioned

Trademark Law

The following companies are mentioned in Trademark Law Updates:

Tiffany (NJ) Inc.

Tiffany & Co.

eBay, Inc.

University of Oklahoma

Smack Apparel Company

Ohio State University

Louisiana State University

Collegiate Licensing Company

Trademark Trial and Appeal Board

NTU Electronics, Inc.

Midway Services, Inc.

Internet Specialties West, Inc.

MDCO, Inc.

Custom Manufacturing and Engineering, Inc.

Automated Engineering Corp.

Woofies, LLC d.b.a. Woofie’s Pet Boutique

Louis Vuitton Malletier S.A.

International Trademark Association

Haute Diggity Dog, LLC

JA Apparel Corp.

Houndstooth Corp.

Harringbone Creative Services, Inc.

Mars, Inc.

Chute Gerdeman, Inc.

Take-Two Interactive Software, Inc.

Rockstar Games, Inc. d.b.a. Play Pen

Volkswagen of America, Inc.

Shokan Coachworks, Inc.

Audi AG

University of Southern California

Utah Lighthouse Ministry

Pfizer Inc.

Discovery Computing, Inc.

JetAngel.com

Foundation for Apologetic Information & Research

ESS Entertainment 2000, Inc. e.s.a. Rockstar Games, Inc.

City of Chicago

General Conference of Seventh-day Adventists

Graffiti Blasters

General Conference Corporation of Seventh-day Adventists

U.S. Patent and Trademark Office

The Associated Press

Creation Seventh Day & Adventist Church

All Headline News Corp.

Super Duck Tours, LLP

Spirits International B.V.

AHN Media Corp.

Boston Duck Tours, L.P.

Milon-DiGiorgio Enterprises, Inc.

OBX-Stock, Inc.

Additional Resources

Trademark Law