California Trademark Attorney® Blog

July 2012 Archives

Rolex Loses Trademark Battle Against Competitor Rox in UK

July 27, 2012,

watch.jpgCalifornia - Switzerland has been known for its stance on neutrality. However, high-end Swiss watchmaker Rolex proved that this is not always the case when it decided to go to war with a competitor over infringement of a trademark. And after a hard fought battle, this week it was announced that Rolex lost its trademark battle with luxury jewelry and watchmaker Rox.

Rox initially filed its application to trademark its distinctive Rox name in the UK back in September 2004. The Application states that Rox intended to use the trademark on "jewelry, watches, clocks and horological instruments, key rings and parts and fittings for the aforesaid goods". The granting of the Rox trademark was allowed under the UK Trade Marks Act of 1994.

At the time of filing, there were no objections by Rolex toward the use of the name "Rox". As such, Rox attempted to register a modified and updated version of its existing logo in 2010. The modified logo was intended for use with "horological and chronometric instruments, watches, clocks, parts and fittings thereof". Rox also attempted to register the trademark in relation to retail services in connection with the horological and chronometric watches and clocks. However, Rolex objected to the second registration. Rolex claimed that consumers were likely to be confused because the trademarks of the two companies were too similar. Additionally, Rolex claimed that the Rox trademark would ruin the distinctive character and reputation of the Rolex name and provide an unfair advantage to its competitor.

Luckily for the up and coming jewelry and watchmaker, the UK Trademark Office decided in favor of Rox. After reviewing the case in its entirety, the Examiner determined that there was no likelihood of consumer confusion because the trademarks were not at all similar. Rox expressed delight with the decision and claimed that, despite the disagreement between the companies, it continues to have the utmost respect for Rolex. After its recent win, Rox is looking forward to opening its first store in Edinburgh, where it plans to display a new line of silver jewelry and other luxury goods.

Ex-Live Front Man Sued By Former Band Mates For Trademark Infringement

July 23, 2012,

concert.jpgCalifornia - Band members are again suing one another for the use of a name they once happily shared. For former Live member Ed Kowalcyzk, life got a little tougher this month when his former band mates, through their company Action Front Unlimited, filed a trademark infringement complaint in U.S. District Court in New York accusing him of illegally using the band's name. And to further add insult to injury, Kowalcyzk created the company that is suing him, with former band mates Chad Taylor, Chad Gracey and Patrick Dahlheimer. The company was created during better times, when the group was producing popular hits.

The lawsuit, filed in July 2012, accuses Kowalcyzk of trademark infringement, trademark dilution and false designation of origin. According to court documents, over the course of the past few years, Kowalcyzk has misrepresented his status to the public, causing confusion among fans. Furthermore, Kowalcyzk allegedly continues to use the band name in promotional materials and advertising, stating that he is "Ed Kowalcyzk of Live". And although he left the band in 2009, promoters, booking agents, venues and fans are being led to believe that Kowalcyzk is still with the band.

Live has had a new lead singer since Kowalcyzk departed, but the band has not released an album since 2006. The rock group is best known for its album Throwing Copper, which was released when the band's popularity reached its zenith in 1994. The band has not achieved the same level of success with its new lead singer Chris Shinn. Fans suspect the former band members are holding a grudge against their former lead singer because he has chosen not to participate in a reunion. The band is seeking $2 million in damages and an injunction to prevent Kowalcyzk from using the Live name in his promotional materials. Fans of both Live and Ed Kowalcyzk are anxiously awaiting the outcome of the lawsuit. Undoubtedly, some of the original Live fans are hopeful that the parties will reconcile so that a reunion might be possible.

Hulu Withdraws Opposition To Dish Network's Trademark Application With USPTO

July 16, 2012,

tv_remote_control.jpgCalifornia - In a surprising and unexpected move, Hulu recently announced that it has withdrawn its opposition to Dish Network's "TV Everywhere" trademark application with the United States Patent and Trademark Office. Hulu and Dish Network would not comment on any specific details of the settlement between the two companies. However, in the filings with the USPTO, Hulu reserved "...all of its rights, claims, remedies and defenses with respect to anyone's ability to use and/or register the term 'TV Everywhere'."

Dish Network initially filed a trademark application for "TV Everywhere" in September 2009. However, the application was immediately challenged by top cable operators including Comcast, Time Warner Cable, Cox Communications, Charter Communication & Cable Vision Systems, DirecTV and Time Warner. Hulu had previously argued that Dish Network should not be granted a trademark registration on a slogan that was considered a standard industry term by most cable companies. Furthermore, the term was a generic reference that was already being used by third parties descriptively in commerce in reference to subscribers of cable, satellite and other television services.

These subscribers could access and watch video content on devices such as phones, laptops, tablets, PCs and gaming consoles, among others. In contrast, Dish Networks claimed that it had been using the term for a number of years to create a commercial impression for the trademark. Consequently, it asserts that the consuming public recognizes the trademark "TV Everywhere" as a source indicator for Dish Network's services. The term is also currently being used to promote Dish Network services for Slingbox products, DishOnline.com and Blockbuster @ Home hybrid services.

NBA's Top Draft Pick To Trademark Signature Brows

July 3, 2012,

basketball.jpgCalifornia - Everyone's eyes have been on NBA hopeful Anthony Davis lately for more than his hoop skills. Davis, the number one NBA draft pick, has a 'unibrow' that he refuses to get rid of. In fact, he is so proud of the look that Davis recently filed trademark applications with the U.S. Patent and Trademark Office for the phrases 'Fear the Brow' and 'Raise the Brow'.

The 19-year-old didn't waste any time to jump on the phrases pertaining to his signature look. Maybe it was a lesson learned from the New York Knicks star Jeremy Lin and the phrase 'Linsanity' that became a frenzy of its own earlier this year. Multiple people filed trademark applications for the phrase 'Linsanity' to make a buck off of the point guard. However, in the end the USPTO determined that Jeremy Lin was entitled to the rights of the trademark.

This is not the first time that someone has been known for his or her facial hair. Frida Kahlo, a painter, is a historical icon that among other things was known for her famous self-portraits that included her unibrow. Also, San Francisco Giants pitcher Brian Wilson became known for not only his pitching talent but also his beard to which the phrase "Fear The Beard" started in 2010. Wilson also filed a U.S. trademark application on December 1, 2010 for the phrase.

Davis, the 6'10" power forward and center said of his facial feature, "I don't want anyone to try to grow a unibrow because of me and then try to make money off of it. Me and my family decided to trademark it because it's very unique."

The U.S. trademark application number 85,642,988 for 'Raise The Brow' was filed on June 4, 2012 and application number 85,643,417 for 'Fear The Brow' was filed on June 5, 2012. Both applications were filed as 'intent to-use' applications in international classes 3, 16, 21, 25, 35 and 41. These classes include goods and services such as aftershave, shaving preparations, bumper stickers, shoes, and charitable and entertainment services.

In April, Davis led the University of Kentucky to the national championship and was selected by the New Orleans Hornets this year. Davis stated regarding his now famous feature, "It changes none whatsoever when I'm in the NBA - I'm not going to change who I am. It's me."