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...

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...

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...

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...