Trademark Cases

Trademark cases are almost interesting. Here are the last 10 filed according to my docket report:

  1. Kentucky Mist Moonshine Inc. v. University of Kentucky (E.D.Ky.) (declaratory judgment lawsuit that UK can’t control the term Kentucky).
  2. Star of Texas Fair & Rodeo v. El Rodeo, Inc. (W.D.Tex.) (arguing that “El Rodeo” is confusingly similar to “Rodeo Austin”.)
  3. Yeti Coolers, LLC v. Evans (W.D.Tex.) (Defendant accused of making knock-off cooler’s using Yeti mark.)
  4. Haru Holding Corp. v. Sapporo Ichiban Inc. (E.D.N.Y.) (Allegations that “Sapporo Haru” restaurant is confusingly similar to the Haru Sushi marks.)
  5. El Holdings Lake City v. Lake City RV Resort (N.D.Fla.) (Allegations that defendant’s “Lake City RV Resort” is confusingly similar to “Lake City Campground and RV Resort”. Both are located within 1-mile of Lake City, Florida.)
  6. Garçon v. FanDuel Inc. (D.Md.) (Class action with Pierre Garçon (NFL Player) as lead plaintiff against fantasy football site.)
  7. Smart Energy Today, Inc. v. DOES (C.D.Cal.) (Alleging that anonymous competitors wrote bad reviews on Yelp.)
  8. Luxottica Group S.p.A. v. The Partnerships and Unincorporated Associations Identified on Schedule “A” (N.D.Ill.) (counterfeit Ray-Bans.)
  9. Direct Niche, LLC v. Via Varejo S/A (D.Minn.) (cybersquatting ACPA action asking US court to overturn WIPO UDRP decision on  casasbahia.com).
  10. Rosenstreich et al v. L’Oreal S.A. (S.D.N.Y.) (Allegation is that L’Oreal’s “TXT IT” cosmetics campaign is too close to the mark “T3XT !T C0$M3T!C$”.)

11 thoughts on “Trademark Cases

  1. 4

    Interesting? I’ve always found the TM side interesting and far, far more organized and functional than the patent side, bureaucratically speaking, What is really interesting is when the big boys lose their TM registrations because of fraud in the registration.

    With that in mind have a look at Microsoft’s registration 85710265, particularly the goods and services in IC 028.

    “Computer operating system programs and utilities” in IC 009, sure. But it would be fascinating to know how many “golf balls” and “y0-y0’s” Bill Gates & Co. have manufactured/marketed. Frisbees and cuddle-dolls? I would be surprised . . .but they did, after all, file a sworn statement of use, so who am I to speculate on some iconic American behemoth’s honesty?

    And the reason I say it is that just slapping your logo on a Duncan yo-yo doesn’t give one the right to register the logo for y0-y0’s. If it did, Southwest could list aircraft in their goods and services and Ford could list billboards. Maybe MS has acquired a y0-y0 company and controls the quality of the product, but I have not been able to find MS y0-y0’s online, not even at the MS store. I’d love to have one, too, as a reminder of who brought us Windows 8.

    Lanham Act 14(3) provides for cancellation of a mark if it was obtained fraudulently. If I’m not mistaken, the whole registration goes up in smoke, not just specific classes or goods/services.

    Dennis discussed Bose in 2009 — the new CAFC requirement that specific intent to defraud the PTO has to be proven. IOW the b0nehead-lawyer-defense to TM fraud is full-on.

    link to patentlyo.com

    Trademarks: almost always interesting!(tm)

    1. 4.1

      You’ve taken a somewhat archaic and unsophisticated view of trademark law and usage. A strict, traditionalist model might dictate that a good bear a mark made only by the craftsman responsible for the product. But I just folded some laundry and noticed my wife has taken to buying “Cuisinart(R)” branded kitchen towels. Unless I’m mistaken, Cuisinart has not gained a foothold in the textile industry any more than Microsoft has yo-yos. I do not believe this to be an impermissible or improper expansion of the mark. In fact, it is now quite commonplace for mark owners to lend their brand via licensing to only tangentially related (or seemingly unrelated) goods that they themselves did not originate in order to seize upon consumer loyalty and goodwill. So long as the mark owner does not turn a blind eye to quality and simply permit the licensee to turn out shoddy goods (i.e., grant a naked license), I think it is well accepted in contemporary practice and would not threaten any underlying registration or right.

      1. 4.1.1

        Yeah, well I’m archaic and unsophisticated, that’s for sure. But I’m not sure my view of tm law is. Then again, I’m out of the field now and most of what I did know was Canadian law, but it follows US tm law pretty closely.

        (BTW, as to differences in the cultures of the two countries, I might just remark that lads in Canada would NEVER publicly admit to folding laundry, least of all the cantankerous lads. But now that Trudeau has appointed a cabinet that is 50% lasses, things may be changing in laundry rooms all over Canada.)

        The potential problem I raised w/ MS was different than the one you raise. My concern is whether the Section 8 affidavit, statement of use, and other sworn statements truthful — I mean, does MS really market yo-yo’s etc. in interstate commerce? If you could tell me where to buy a MS yo-yo, I would be eternally grateful.

        And I don’t believe that the field has become as Wild West as you suggest. A tm is still a guarantee of quality to the public — that’s the primary purpose. A cavalier license arrangement without requisite control over quality can certainly lead to the cancellation of a mark, as well as to unintended dilution and loss of distinction. So, I question your implied position that MS could just slap their mark on any old yo-yo.

        As for folded kitchen towels . . . mine are all paper. Wadded, not folded.

  2. 3

    arguing that “El Rodeo” is confusingly similar to “Rodeo Austin”

    Seriously?

    You’re right, Dennis, that one is “almost interesting.”

      1. 3.1.1

        Well, they both include the word Rodeo (used in connection with advertising rodeos).

        Yes, that is confusing.

    1. 3.2

      BET (Black Entertainment Television) will contest anything with the word “bet” in it. Or at least they used to.

    1. 2.1

      I caught this too. My guess would be he meant “almost always”. As someone who does primarily patent work, I do find the original somewhat accurate though.

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