California Trademark Attorney® Blog

April 2012 Archives

California Based TiVo Wins Trademark Infringement Lawsuit

April 19, 2012,

tv_remote_control.jpgCalifornia - TiVo, the global creator and leader in advanced television services including digital video recorders (DVR's) has won a trademark infringement lawsuit against VIVO International Corporation, an Australian-based television manufacturer.

"This ruling validates the notoriety and reputation of TiVo across the world as it relates to the continually innovative consumer electronics industry," commented Matt Zinn, Senior Vice President, General Counsel, Secretary and Chief Privacy Officer for TiVo. "We are pleased that the court found TiVo's long standing reputation as a leader in advanced television to be fundamentally unique and this case should serve as a warning to others who, intentionally or unintentionally, seek to capitalize on the TiVo trademark for their own benefits."

In her ruling, the Australian court judge found TiVo to have established an undeniable reputation with Australian consumers for "its advantages and novel features" based upon its substantial accolades in national media and entertainment pop culture. Because of the well-established TiVo trademark, the judge ruled that VIVO's use of its VIVO trademark indeed infringed on TiVo's rights, even though VIVO was in use before TiVo began offering service in Australia. As a result, VIVO was ordered to immediately stop using its registered trademark and that any further use of the trademark would constitute continued infringement of the TiVo brand. TiVo agreed to temporarily stop legal proceedings while the court determines whether VIVO will be allowed to appeal the decision.

During a time where TiVo continues to gain impressive global market share with subscribers, its global presence includes partners and subscribers in Australia, Canada, Mexico, New Zealand, Spain, Taiwan, and the United Kingdom.

TiVo, headquartered in San Jose, California, was founded in 1997. The company is credited for being the first to develop digital video recorders available to consumers, with its DVR's and service available for sale online through its website or through third-party retailers, such as Amazon. Over the years, TiVo has become the ultimate media solution center by combining its patented DVR technologies and universal cable box capabilities with the ability to combine, search, and deliver millions of pieces of broadband, cable, and broadcast content directly to viewers.

California Businessman Files for "I Believe You Zimmerman" Trademark

April 11, 2012,

jail.jpgCalifornia - As one of the most despised men in the country was in hiding, a California businessman showed his support by filing for the trademark "I Believe You Zimmerman." Lawrence Sekara of San Francisco submitted an online application for the trademark for use in four separate classes to capitalize on the name of George Zimmerman, the gunman who shot a Florida teenager to death.

As the controversy surrounding seventeen-year-old Trayvon Martin's death continues, Sekara says that he plans to use the trademark on a variety of merchandise such as beer mugs, bumper stickers, aloha shirts, and other apparel. Reportedly unfazed by the likelihood of being criticized for profiting from the highly publicized case, Sekara claims that he would like to share some of the profits with Zimmerman himself, who has left his job and family to go into hiding. The San Francisco entrepreneur said that so far he has invested $5,000 into the Zimmerman venture.

Zimmerman recently set up a website to solicit donations from supporters for "living expenses" and "legal defense." Zimmerman has cited Florida's Stand Your Ground law in his self-defense claims as to why he shot the teenager.

On the same day Sekara filed the trademark with the USPTO, he also registered the domain name ibelieveyouzimmerman.com.

Sybrina Fulton, the mother of the slain teenager, has also filed trademark applications as a result of the tragedy. Fulton filed for the phrases, "I Am Trayvon" and "Justice for Trayvon" in the class covering DVD's and CD's. Some speculate that the filings are her attempt to profit from her own son's death, while Trayvon supporters argue that she is using them to spread the word about racial profiling.

Now that it is certain that Zimmerman will be charged in Trayvon Martin's death, Trayvon supports appear to have some justice.

Facebook Claims the Word 'Book' as a Trademark

April 3, 2012,

facebook.jpgCalifornia - If you are among the 845 million active Facebook users, then you can soon expect to review a new Statement of Rights and Responsibilities from the social network giant. Last week Facebook announced that it would soon be updating its Statement of Rights and Responsibilities, giving ample time for its users to voice their concerns to the company. Users had up to last Thursday to state any concerns with the new agreement and Facebook is currently reviewing the feedback. Once all changes are finalized users can expect to receive notification about the new Statement of Rights and agree to it or discontinue using the site.

Among the current 9 pages of changes, which are open for public viewing, Facebook swapped out its '32665' trademark which it previosly abandoned and now lists the word "book" as a trademark. The previous excerpt in the Statement of Rights and Responsibilities stated: "You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Wall and 32665), or any confusingly similar trademarks, without our written permission". It will now change to: "You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Book and Wall), or any confusingly similar trademarks, except as expressly permitted by our Brand Usage Guidelines or with our prior written permission." The change is listed in the 'Facebook Site Governance' section of the agreement.

Other changes to be expected in the new agreement will include sharing your content and information, safety or "community standards", special provisions applicable to social plugins, and special provisions applicable to software. Although Facebook has yet to file a trademark application with the U.S. Patent & Trademark Office for the word 'book', adding the word to its new user agreement might be the first step in that direction. Facebook currently has at least 70 trademarks in addition to the eight listed in the excerpt above such as 'FriendFeed', 'Like' and 'FacePile'. Although Facebook has successfully trademarked the word "Face" it may not be as easy to trademark the word 'book'.