Pied Piper’s Trademark Problems

On a recent episode of HBO's new show Silicon Valley, the hapless coders find themselves in a bind when they realize that the "placeholder" company name "Pied Piper, Inc." was already in use by Pied Piper Irrigation, another California company. The problem is that they received a check from a venture capitalist in the name of the Pied Piper Inc. - humorous situations then ensue as the protagonist tries solve the problem - and then, I began ranting at the television to the chagrin of my wife. Why, you might ask, does this drive me crazy? Not because it is a common and overused plot point, but more notable because it gets both state registration laws and trademark laws completely wrong by muddling the laws of business registrations and trademarks. Someone already registered my business' trade name - what do I? A trade name is the name used to identify the business. States have varying restrictions on...
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Top 10 Lists

I was recently asked by an attorney friend about using the phrase “The Top Ten Reasons…” in relation to a top ten list (á la David Letterman) that she was planning on using in a marketing piece.  This wasn't a comic work meant to mimic the David Letterman version, but rather a serious piece meant to provide useful information regarding estate planning strategies.  So the question to me was whether she could use the “Top Ten List” format without running afoul of Letterman’s intellectual property. My response was that there was a very low probability of risk – the term “Top Ten List” is descriptive and therefore not generally protected by trademark unless it has acquired such distinctiveness that the term is pretty much only associated by one source.  While, in certain contexts it is undoubtedly a very famous list, it is hardly the only place in which you can find people putting together lists of things in quantities of 10. Further,...
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Linsane Trademarks

Linsane Trademarks

Since February 7th the Trademark office has received eight trademark applications for the term LINSANITY.   The products identified in applications range from clothing, jewelry, and sport drinks, to eyeglasses and cell phone covers.  The only problem is only one of these applications is on behalf of the Knick's Jeremy Lin (Serial 85541426); and it is a basic premise of trademark law that you can not register the name of a living person without that person's written consent.  Perhaps more concerning, however, is the attempt of people who know him to cash in on his name - one of the applications is by Roger Montgomery for the purpose of "Business management of sports people" (Serial 85542514) and who the Washington Post identifies  as Lin's own agent. While some of the applicants may try to argue that it is purely coincidental that they want to register the name in the middle of Mr. Lin's hot streak ("by Linsanity, I mean LENS...
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Limitation on Color Trademarks in the Fashion Industry

In 1992, shoemaker Christian Louboutin began using red lacquer soles on some of its shoes.  In 2008, the red soles were registered as mark in the US Patent and Trademark Office, and on January 1, 2008, number 3, 361,597, the “red sole mark” came to life. In 2012 Louboutin sued Yves St. Laurent ("YSL").  They were seeing red  (pun intended) over the recent Yves St. Laurent 2011 Resort collection, which included red-soled shoes, the Louboutin signature brand detail.  Louboutin filed a trademark action against YSL, which YSL prominently countered with a counter-suit seeking cancellation of the Louboutin trademark registration.  Louboutin responded with a request for a  preliminary injunction temporarily preventing YSL from selling the shoes until the dispute was settled.  The district court initially denied Loboutin's request largely on the basis that . . ."in the fashion industry color serves ornamental and aesthetic functions vital to robust competition  . . . However, “Color alone “ sometimes ” may be protectable as a...
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Options When Taking Down Counterfeiters – $164 million awarded in Tory Burch lawsuit

Earlier this month, the U.S. District Court, Southern District of New York awarded a default judgment to clothing designer Tory Burch LLC in its trademark counterfeiting and cyber-squatting case against  232 websites which sold copies of Burch’s handbags, flats, and accessories.  After none of the 232 defendants answered the complaint, the Court awarded damages of $164 million and ordered that the counterfeit websites be turned over to Burch. The $164 million is the largest settlement of this type.  Additionally, the Court used the process provided in similar cases involving The North Face and Ralph Lauren which ordered third-party payment facilitators, such as PayPal, to disgorge any money in Defendants' accounts.    While it is not expected that Burch will ever recover the full judgment in this case, the ability to take possession of the infringing domain names, along with the ability to freeze related financial accounts, gives the plaintiff a great tool in combating future infringement and sends a strong warning...
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Trademark Enforcement

When thinking about whether or not to enforce a trademark, keep in mind the purpose of having the mark is to serve as an identifier of the source of the good or service for consumers. With this in mind, in order to preserve your own rights to a mark you have to try to maintain its strength as an identifier for your product. In the event you have adopted a mark, an important part of maintaining it is to monitor the marketplace for others using identical or similar marks for the same or similar services. In the event you locate someone using the mark in a way that might cause consumer confusion, steps should be taken to eliminate potentially weakening of the mark. Consideration should be given to sending a letter advising the infringing user of your prior use and demanding that they stop using the mark (sometime referred to as a cease and desist letter). Before sending such a letter,...
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Trademarks and Pepper Potts – Is Iron Man a good or a service?

Warning: this may be one of my more nonsensical posts.After seeing Iron Man 2 this week, I felt compelled to speak out about the misinformation propagated by Pepper Potts. During a scene in which Tony comes into Pepper's office, we overhear Pepper talking to an unidentified party about the suit. In the conversation (which I am editing to avoid spoiling it for anyone who went to see Robin Hood this weekend instead), Ms. Potts repeatedly references the intellectual property right in the suit being based on trademark law. My beef? It is clear from the story line, that the issue is one of patent law, not trademark.Trademarks generally serve two purposes: 1) to provide consumers with an assurance as to the source of goods or services; and 2) to protect the value that a business receives from creating and marketing a product. Patents, on the other hand, are intended to protect inventors...
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When is a farm boy just like any other farm boy?

When is a farm boy just like any other farm boy? That's the question at the heart of a recent Federal Circuit decision (Odom's Tennessee Pride Sausage, Inc. v. FF Acquisition, LLC, No. 09-1473) involving a decision by the USPTO to grant a trademark registration to FF Acquisitions (a SuperValu company) over the objection of Odom (a retail food conglomerate). Despite the fact that the registration in question was merely adding the body onto an already registered mark making up the torso of a farm boy (mark on the right), Odom was concerned that the mark was now likely to confuse consumers and opposed the registration, citing its own registrations. Even though Odom argued that there were other factors to be considered under the DuPont test for likelihood of confusion, the USPTO and the Circuit court summarily dispatched the complaint by noting that the registered marks differed in...
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Baseball Uniforms as Trade Dress: MLB v. Donruss

An interesting case was recently filed involving baseball card manufacturer Don Ross and Major League baseball. Among several counts involving, minor league players, retired players and current players is a claim that that Donruss inappropriately used the trade dress of the former Major League players. Interestingly, the complaint seems to indicate that there isn't a claim of trademark infringement related to the cards with the former players. While it is not spelled out in the complaint, it appears that the claim is that even though the logos have been removed from the pictures of these players (thereby avoiding the trademark claim) that because the colors and other parts of the uniform are visible, the trade dress has been infringed.It is standard practice to remove the logos on licensed memorabilia of sports figure, but if this case plays out in favor of MLB, it would appear players will have to be completely stripped of any identifying...
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Deceptive Hot Dogs: Food Trademarks

Found in a complaint in a recently filed trademark case:"The hot dog, synonymously identified over the years by a host of names including frankfurter, sausage, frank, wiener, dog and others, has a rich and long history in the United States."http://www.scribd.com/doc/9620013/Complaint-Dogma-Hot-DogsOk, I confess, I have no reason for posting this other than the fact that it amuses me that the attorney who wrote this sat down to write out synonyms for hot dogs. Some other synonyms include:Georgia hot, boaster, crowd-pleaser, dog, flaunter, foot long, footlong, frank, frankfurter, grandstander, hotshot, pigs in a blanket, ...
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