California Trademark Attorney® Blog

December 2011 Archives

Rap Artist Young Buck May Lose Trademarked Name in Bankruptcy Case

December 28, 2011,

concert.jpgCalifornia - The rap artist known as Young Buck has been ordered by a bankruptcy judge to liquidate most of his assets, including his trademarked rap name. The judge handling the case recently changed the rapper's bankruptcy status from Chapter 11 reorganization to Chapter 7 liquidation. The artist, whose legal name is David Darnell Brown, was close to inking a recording deal with Cash Money Records, which he claims would have given him the money to pay his debts and emerge from the Chapter 11 status.

Jeanne Burton, the trustee in charge of administering the assets from Young Buck's estate, said she will be selling the rapper's trademarked "Young Buck" moniker along with other assets. According to Burton, she was left with no other choice but to liquidate since there was no money left to pay debts and future bills. In a statement from Burton's attorney, she said, "There was no deal finalized within the time frame that was necessary for the case to remain in Chapter 11. There are insufficient remaining funds in the estate to pay the ongoing administrative expenses that are due," she added.

It appears that Buck's money troubles began in 2008, when he was prevented from recording music under his contract with G-Unit Records, after a falling out with G-Unit owner, rapper 50 Cent. The proposed multiparty deal that was in the works before the liquidation ruling would have settled Buck's contract dispute with G-Unit and released him to sign a deal with Cash Money so he could resume his rap career.

Buck, who entered Chapter 11 bankruptcy in October 2010, would have had the ability to pay his creditors with future revenues earned from the anticipated record deal. Buck insists that the trustee's move was shortsighted and counterproductive to his case.

"I just wish the trustee would understand that I'm actually in a position to actually work again," Buck stated. "Either way it goes, you're going to get paid. Cash Money provides me with a job to pay off the bankruptcy and creditors." Buck also said that his "Young Buck" rap name was not given to him by G-Unit, but that he garnered the nickname as a young teenager, therefore he shouldn't be forced to give it up. Brown filed for the "Young Buck" trademark back in February 2004.

It's not clear what impact the loss of the trademarked name will have on the Cash Money deal.

Malaysian High Court Upholds Trademark Infringement Claim

December 27, 2011,

diamond.jpgCalifornia - In Malaysia, the Kuala Lumpur High Court recently upheld a trademark infringement claim over archived jewelry items on a community website. The plaintiff alleged that the defendant had infringed on its JACMOLI trademark by failing to delete from the archives of its website, several articles featuring the plaintiff and the plaintiff's JacMoli boutique and trademark. The plaintiff is the registered owner for the JACMOLI trademark in relation to jewelry products in Class 14 in Malaysia.

The articles were written back when the plaintiff was a tenant at the defendant's Starhill Gallery Shopping Centre. Not surprisingly, the defendant is denying any infringement on the JACMOLI trademark or that it passed off its goods or business as that of the plaintiff in any way. In its defense, the defendant is contending that the articles at issue on the YTL website are merely archives and are only used as a record of past events or historical facts pertaining to its Starhill Gallery Shopping Centre, and that the articles were originally published to promote the plaintiff when the plaintiff was a tenant at the shopping centre.

In its decision, the court ruled in favor of the plaintiff on the basis that it had established its claim for trademark infringement and its claim that the defendant passed off its business to be related to the plaintiff or plaintiff's trademark, therefore awarding the plaintiff damages. The court also dismissed the defendant's counterclaim and is requesting it pay for court costs.

Red Bull Loses Trademark Infringement Battle in Europe

December 20, 2011,

cans.jpgCalifornia - Austrian-owned Red Bull Energy Drink has lost a trademark infringement dispute with the 214-year-old Dutch company, Frisdranken Industrie Winters B.V..

The legal battle, which Red Bull took all the way to the European Union's highest court, was sparked over the Frisdranken's use of logos and text such as 'Bullfighter' and 'Red Horn' while filling cans of "Smart Drinks" packaged for another company. Red Bull, known for its red bull logo, sued the Dutch company for trademark infringement.

However, much to Red Bull's dismay, the high court did not buy its argument, with the European Union Court of Justice declaring, "A service consisting of the mere filling of cans bearing a sign protected as a trademark is not use of that sign which is liable to be prohibited. The service provided by Winters consists of the filling of cans and this service does not have any similarity with the product for which Red Bull's trademarks were registered."

Manufactured and sold by the Austrian Red Bull GmbH, Red Bull was launched in 1987 by the Austrian entrepreneur Dietrich Mateschitz and is currently the most consumed energy drink in the world. Its slogan is "Red Bull gives you wings" and is marketed through advertising, sports team ownership, tournament sponsorship, and celebrity endorsements. In 1989, Red Bull was introduced to Hungary and Slovenia, its first international markets and the drink eventually expanded to the United States in 1997. In 2008, Forbes magazine listed founder Dietrich Mateschitz as the 260st wealthiest person in the world, with an estimated net worth of $5.0 billion.

S.C. Johnson & Son Enters into Trademark License for Ziploc Products

December 16, 2011,

plastic-bag-ziploc.jpgCalifornia - S.C. Johnson & Son, Inc. (SC Johnson) announced today that it has entered into a Trademark Licensing Agreement with CTI Industries Corporation, a manufacturer and marketer of packaging and storage bags and pouches, metalized balloons, latex balloons, novelty gift items, and printed laminated items. Under the trademark agreement, CTI will be licensed to manufacture and sell a line of vacuum sealing machines and pouches under the Ziploc brand and trademark.

One of the top manufacturers and marketers of metalized and latex balloons, CTI Industries develops, produces, and markets bags and pouches for storage and packaging purposes and makes laminated and printed films for commercial applications. CTI distributes its product lines throughout the United States as well as in other countries. CTI was founded in 1976 and is headquartered in Lake Barrington, Illinois.

The licensed Ziploc product line under the agreement will include vacuum sealing machines manufactured solely for CTI and plastic pouches for use to electronically seal the air out of food items. The products will be sold in a number of large retail outlets across the country.

Founded in 1886 as a parquet flooring company, in addition to Ziploc, SC Johnson manufactures and markets other household brands such as Saran, Pledge, Scrubbing Bubbles, Windex, Shout, Raid, and Off!. In the past, SC Johnson has negotiated many patent and trademark licensing agreements with manufacturers and distributors of household products.

In 2001, SC Johnson created an environmental classification system called the "Greenlist" to change the way it measures, tracks, and improves its products, with its commitment to environmental responsibility the primary goal. SC Johnson has shared its "Greenlist" process with the United States EPA, China's Ministry of Environmental Protection, Environment Canada, industry associations, universities, and corporations and these entities partner with suppliers to identify and develop ingredients that are more environmentally sustainable. Currently, SC Johnson has a licensing agreement with Five Winds International to make the "Greenlist" system available to other companies royalty-free, provided they comply with Five Winds' terms.

Foreign Companies Get Dose of Reality Over Chinese Non-Use Trademark Laws

December 12, 2011,

chinese_flag.jpgCalifornia - The China Trademark Law of 2001 does not require that a registered trademark be used in commerce by the registrant (or licensed use by a third party) in order to claim exclusive trademark rights against unauthorized use. However, recent case law has placed an even greater burden on trademark registrants to prove actual use of their trademarks, both in order to prove that consumer confusion exists and also as a prerequisite for damage claims. Thus, the trend has resulted in the third amendment of the Trademark Law.

Article 52 of China's Trademark Law of 2001 states that:

"A person infringes the exclusive right to use a registered trademark if he..."

(1) uses a trademark that is identical with or similar to a registered trademark in
Relation to identical or similar goods without consent of the owner of the
Registered trademark.

Currently, the law does not indicate that a trademark registrant have used the trademark in commerce in order to claim infringement. Chinese courts have heard and rejected numerous defenses that were based on the claim that the registrant had not actually used the trademark in business. However, some courts are reaching a different conclusion, as a result of bad-faith litigants taking legal action against large companies, claiming trademark infringement even thought they had never used the trademarks in commerce, and seeking legal damages over the alleged infringement.

In the 2008 infringement case over the trademark RED RIVER, the Supreme Court in China threw out two previous court decisions and held that since the plaintiff had not used its registered trademark RED RIVER on beer, the trademark had failed to establish a uniqueness of its own and was unable to distinguish itself from others. Therefore, the Court concluded, consumers would not associate or confuse the defendant's RED RIVER beer with the plaintiff's trademark.

The draft amendment of the Trademark Law deviates from previous law in that it changes the status of the plaintiff's alleged loss if the trademark has not been used in commerce, using the following logic:

(1) If the registrant has not actually used the trademark for commercial use, then the unauthorized use of the trademark by a third party would not cause consumer confusion.
(2) Since no confusion would exist, the trademark registrant would not have suffered any loss.
(3) If no loss has been suffered by the plaintiff, then no damages would be due.

This major change will undoubtedly cause many foreign companies to change their strategies concerning intellectual property in China. The amendment to the China Trademark Law will surely give foreign companies a reason for commercial use of their registered trademarks in China, in order to maintain validity of their registrations and to have proof of use before taking legal action against any unauthorized third parties.

California Beach City Manhattan Beach Sued for Trademark Infringement

December 12, 2011,

volleyball.jpgCalifornia - The parent company for the Association of Volleyball Professionals, now out of bankruptcy, is suing the city of Manhattan Beach, CA and the organizers of the 2011 Manhattan Beach Open for trademark infringement, false advertising, and unfair competition.

Last summer, USA Volleyball and the International Management Group (IMG) partnered with the city of Manhattan Beach to host the professional beach volleyball tournament, sponsored by Jose Cuervo.

DFA PVA II Partners, LLC, the corporation that owns the AVP, is alleging in its lawsuit that by hosting the Manhattan Beach Open, the organizers created "confusion, mistake or deception as to the origin, sponsorship or affiliation of the tournament," therefore depriving the company of revenue that rightfully belongs to it. The complaint also alleges that the organizers "used a confusingly similar imitation" of the AVP logo to market the event, "furthering the false impression that AVP was the source of the tournament."

The company is demanding that the case by decided by a jury.

According to the Manhattan Beach City Attorney, the city has hosted the Manhattan Beach Open volleyball tournament for 51 years, therefore making it the owner of the trademark. Online records indicate that DFA PVA II registered the Manhattan Beach Open trademark in January 2009.

Apparently, before it declared bankruptcy in 2009, AVP obtained the federal trademark registration for "Manhattan Beach Open" for entertainment services, namely, arranging, organizing, and conducting athletic competitions, exhibitions, and community festivals and cultural events in the nature of volleyball games, tournaments, and competitions," as indicated by the United States Patent and Trademark Office website. However, federal registration is not the end all for establishing rights to a trademark, and first use often takes precedence.

In its contract with the organizers of the event, USA Volleyball and the IMG, the city of Manhattan beach agreed to "defend, and hold harmless USA Volleyball and IMG from any and all claims, liabilities, expenses, and damages of any nature, including attorneys' fees" that may come as a result of the contract, including "any legal action by a third party against the use by organizer of the name 'Manhattan Beach Open,'".

"We'll be handling the litigation," the city attorney stated.

Company Challenges Arkansas Lottery Over Trademark

December 12, 2011,

cash-suitcase.jpgCalifornia - An attorney representing a Little Rock marketing firm argued this week before the state Supreme Court that his client should be allowed to proceed with a trademark infringement lawsuit against the Arkansas State Lottery Commission.

After hearing arguments, the state Supreme Court did not immediately issue a ruling in the trademark infringement lawsuit filed by Alpha Marketing against the Lottery Commission. In its lawsuit, Alpha Marketing is seeking exclusive rights to use the terms, "Arkansas Lottery," "Arkansas Lotto," and "Lottery Arkansas."

Ed Dozier, owner of Alpha Marketing, filed the complaint after the Arkansas Attorney General's Office warned him that he would be hit with a lawsuit if he continued to use the terms. The Attorney General's Office claimed that the Secretary of State's Office should have never granted the trademarks in the first place, since lotteries were not legal in the state until 2008 when voters approved a constitutional amendment to allow a state lottery to raise funds for college scholarships.

Earlier this year, Judge Wendell Griffen of Pulaski County, denied a motion by the state to dismiss the lawsuit on the grounds that the lottery has sovereign immunity as a state agency. The state then appealed the decision to the high court. However, the attorney for Alpha Marketing argued in court Thursday that the state lottery is run as a for-profit business and therefore, sovereign immunity does not apply.

"It's a state-run monopoly. They charge for tickets and they deduct their operating expenses and they make a profit," the attorney stated.

Assistant Attorney General Mark Ohrenberger, challenged the attorney's argument by saying that if the Lottery Commission was truly a for-profit entity, then the state Department of Finance and Administration could be labeled a for-profit business because it collects taxes. Ohrenberger went on to say that one hundred percent of the lottery's profits must go for college scholarships.

During Thursday's arguments, the judges questioned whether the issue was presented to them properly, indicating that Judge Griffen had not stated in his order his reasons for denying the motion.

It would appear that the state of Arkansas would have mud on its face if it didn't even have the right to use the Arkansas Lottery trademark for its own state-run lottery.

Facebook Must Prove Personal Jurisdiction In Trademark Infringement Suit Against Faceporn

December 9, 2011,

facebook.jpgCalifornia - A California Federal Court has raised, on its own motion, the issue of personal jurisdiction in Facebook's trademark infringement suit against Faceporn. A U.S. District Court in San Francisco placed the burden on the social networking site Facebook to show why Norway based Faceporn is subject to personal jurisdiction in California. The court will dismiss the action if Facebook is unable to show cause to subject Faceporn to jurisdiction in California.

Personal jurisdiction requires sufficient minimum contacts with the forum state including but not limited to advertising in the forum state, directing sales toward the forum state, and other actions evidencing that defendant purposefully availed itself of the protections of the forum state. An analysis of personal jurisdiction is also based on traditional notions of fair play and justice. The court determines whether it is fair to force a non-resident defendant to litigate an action in another jurisdiction. In this case, Facebook initially alleged that Faceporn has more than 250 active users in California and 1000 users in the United States. Facebook further claimed that Faceporn directed business to the U.S. by registering a .com domain name.

The District Court however, noted that these allegations alone were not sufficient to confer jurisdiction on Faceporn. The District Court Judge cautioned that without facts demonstrating that California residents constituted a substantial percentage of Faceporn's business, the lawsuit would be dismissed for a lack of personal jurisdiction. The 9th Circuit cited Mavric Photo v. Brandtech in which the appellate court found that not all material on the internet was aimed at each jurisdiction simply because it was accessible there.

Facebook's trademark infringement suit originated when Facebook discovered Norwegian company Retro Invent's site, which redirects to Faceporn is an adult entertainment, pornographic, and social networking site. American social networking giant Facebook claims that Faceporn's name and domain name creates a likelihood of customer confusion and may deceive consumers into believing that Faceporn and Facebook are associated.

Judge Rules in Favor of Pittsburgh Steelers in 'Terrible' Trademark Dispute

December 6, 2011,

football.jpgCalifornia - Today in federal trademark court, U.S. District Judge Arthur Schwab ruled in favor of the Pittsburgh Steelers LLC and a foundation for disabled students in a trademark infringement dispute with a T-shirt retailer. In addition to trademark infringement, the complaint, filed in August, also accused Eugene Berry Enterprises LLC of unfair competition, fraud, and other offenses. Eugene Berry, owner of Eugene Berry Enterprises, infringed on the 'Terrible' trademark by selling black and gold T-shirts bearing the phrase, "The Terrible T-Shirt, A Pittsburgh Original."

The judge ruled that the Pittsburgh Steelers LLC and the Allegheny Valley School Foundation have exclusive rights to the 'Terrible' trademark. Judge Schwab permanently banned Berry from producing and selling the T-shirts or any products bearing the 'Terrible' trademark. According to court documents, Berry had been selling the T-shirts since February and continued to do so after the Allegheny Valley School Foundation had asked him to stop.

In its complaint, the Allegheny Valley School Foundation had asked for damages including profits from the sale of the T-shirts, attorneys' fees, and other expenses. No information was immediately made available as to whether damages were awarded to the plaintiff.

The Allegheny Valley School Foundation, which benefits directly from sales of merchandise with the 'Terrible' trademark, is a charitable corporation that provides valuable services for about 900 Pennsylvanians with intellectual or developmental disabilities. The late sportscaster Myron Cope (1929-2008), known for being the "voice of the Pittsburgh Steelers," created the Terrible-Towel in the mid-1970's. In 1996, he donated the 'Terrible' trademark to the Allegheny Valley School, where his autistic son lived. The Pittsburgh Steelers continue to have an exclusive license to market Terrible-Towel items.

Neither party could be immediately reached for comment on the judge's decision.

Bayer Healthcare Shakes Off Competitors in Flea-based Trademark Infringement Lawsuit

December 6, 2011,

cat-licking.jpgCalifornia - Bayer Healthcare LLC, Animal Health Division has reached a successful settlement in a trademark infringement case against India-based Cipala Ltd. and Vanuatu-based Archipelago Suppliers, an operator of several websites. Both companies have signed settlement deals with Bayer and have agreed to stop selling products that infringe on Bayer's Advantage and Advantix trademarks and surrender any profits from such sales. The products are popular among conumers to rid household pets from fleas by placing a small amount of fluid on the back of the pet's neck.

After recently becoming aware of Cipala's manufacture of one of its leading products, Advantage, and of sales by various websites to U.S. consumers, Bayer sought a preliminary injunction to immediately block any future infringing sales into the United States.

After mounting pressure from Bayer's trademark infringement complaint, filed in New York federal court in September, Cipala agreed to stop making the DA Double Advantage and selling it to consumers via the Internet. Bayer was also awarded damages in the amount of $100,000 for legal fees and Cipala will have to forfeit more than $100,000 in sales of the infringing product. In addition, Cipala will have to recall all remaining infringing DA Double Advantage still on the market.

Archipelago Suppliers, the owner and operator of several websites that sell the infringing flea control products, agreed to a court ordered Consent Decree that will prohibit it from selling DA Double Advantage or any product with the same formulation. The judgment will also prevent Archipelago Suppliers from selling Advantix into the United States.

Bayer's Animal Health Division is one of the world's leading manufacturers and marketers of veterinary drugs, with a portfolio of approximately 100 different veterinary drugs and pet care products. The U.S. headquarters for Bayer Healthcare LLC, Animal Health Division is located in Shawnee, Kansas.

Court to Decide Fate of Maker's Mark Trademark Wax Seal

December 2, 2011,

whiskey-in-glasses.jpgCalifornia - A panel of three federal judges in the U.S. 6th Circuit Court of Appeals will decide whether Maker's Mark may keep its distinctive wax seal trademark which tops bourbon bottles on store shelves everywhere. The judges will also determine whether Maker's Mark will be able to enforce injunctions preventing any other liquor company from using a similar wax top.

The Kentucky-based bourbon distiller won a 2010 court order granting it exclusive rights to the dripping red wax seal. At the same time of the 2010 order, U.S. District Judge John G. Heyburn II granted Maker's Mark and injunction prohibiting any other company from using a similar seal, claiming that the bourbon-maker had creative a valid, distinctive trademark.

Judge Heyburn's injunction ended a seven-year long trademark infringement lawsuit between Maker's Mark owner, Fortune Brands, and London-based Diageo North America and Casa Cuervo of Mexico. Casa Cuervo infringed on the bourbon-maker's seal by using a dripping red wax seal on its Reserva tequila bottles. The Deerfield, Illinois-based Fortune brands has since split its liquor business into a new company called Beam, Inc., which handles the distilling of the Maker's Mark bourbon.

Attorneys for Diageo and Casa Cuervo argued that the liquor companies' use of the similar wax seal would not cause consumers to be confused since it was being used on tequila and not a competing brand of bourbon. They also claimed that use of the seal would not cause consumers to think that Maker's Mark was in any way associated with the companies.

An attorney for Maker's Mark claimed that the dripping seal was used by the Kentucky company to set it apart from other liquor brands, and that that was its only purpose. The attorney, who is the brother of comedian Stephen Colbert, made the following statement, "What they have here is a competitive desire to use the wax, not a competitive need to use wax."

Casa Cuervo responded to the 2003 trademark infringement complaint by dropping its use of the wax seal six years ago. In that case, the judge did not award damages to Maker's Mark, saying that although Casa Cuervo violated the trademark, it had not focused its marketing efforts on the red wax seal to the extent of damaging the Maker's Mark brand.

The appeals court did not provide a timeline for deciding the future of the red wax seal trademark.

Maker's Mark spends approximately $22 million annually on marketing its bourbon, which sells for $25 per bottle. Its advertising campaign puts a lot of emphasis on the dripping wax seal and even has onsite dipping stations that allow customers to make their own wax seals on bourbon bottles.