California Trademark Attorney® Blog

Nike's Covenant Not to Sue Bars Trademark Invalidity Counterclaim

January 14, 2013,

nike.jpg.jpgThe United States Supreme Court ruled Wednesday that a shoe company could not dispute the validity of one of Nike Inc.'s trademarks, after Nike agreed not to sue the company for infringement.

Given that Nike's covenant fully insulates Already LLC from any infringement claims from Nike, the court ruled that a controversy no longer exists between the parties and therefore the court cannot hear Already's invalidity claims against Nike.
The Court also held that allowing Already's invalidity claim to proceed would undermine the requirements for filing a lawsuit under Article III of the U.S. Constitution, which requires that there must be an actual controversy between the parties in order for a legal action to proceed.

Nike initially filed the lawsuit against Already in 2009, claiming that Already was selling two lines of shoes, its Sugar and Soulja Boy brands, that infringed on Nike's design trademark for its Air Force 1 line of sneakers. Already responded with a counterclaim that alleged Nike's design trademark is invalid.

When litigation costs began to outweigh its possible benefits, Nike moved to dismiss the lawsuit and issued Already a covenant not to sue. However, Already opposed the dismissal of the invalidity claims, arguing that it should still be able to dispute Nike's trademark.

Chief Justice John Roberts wrote the unanimous decision affirming the Second Circuit's ruling. The court held that since Nike had agreed unconditionally not to sue Already, the federal courts lack jurisdiction over Already's counterclaims that Nike's trademark is not valid.

"Given the covenant's broad language, and given that Already has asserted no concrete plans to engage in conduct not covered by the covenant, we can conclude the case is moot because the challenged conduct cannot reasonably be expected to recur," the opinion stated.

Justice Anthony Kennedy wrote in a concurring opinion, which was backed by Justices Clarence Thomas, Samuel Alito and Sonia Sotomayor, that a covenant not to sue may not always bar an accused infringer from continuing its invalidity counterclaim.
The concurring opinion stated that the covenant not to sue must be sufficiently broad enough to remove any risk that the defendant might be sued for infringement again in the future. Nike's covenant was broad enough to eliminate the risk of future litigation, but the concurring opinion warned that might not always be the case.

Sally Beauty Pays $8.5 Million in Trademark Infringement Settlement

December 5, 2012,

shampoo.jpgCalifornia - Sally Beauty Supply LLC agreed yesterday to pay $8.5 million to Mixed Chicks LLC after a California jury found that Sally Beauty had infringed on the MIXED CHICKS trademark.

Mixed Chicks, a company that provides hair care products for multiracial women, filed the complaint against Sally Beauty in the California Central District in March 2011. Mixed Chicks argued that Sally Beauty's "Mixed Silk" product line infringed its trademark and the trade dress of its product packaging.

The complaint also alleged that consumers who searched for "mixed chicks" on Sally Beauty's website would only get results for the "Mixed Silk" line of products, which Mixed Chicks claimed caused confusion between the two product lines.

According to the complaint, Sally Beauty "programmed or caused the search engine on the Sally Beauty website to operate in this manner to cause confusion or mistake, or deceive as to the origin of the Mixed Silk hair care products with the intent to benefit from Mixed Chicks' reputation and goodwill."

Mixed Chicks claimed that the "Mixed Silk" line appeared shortly after Mixed Chicks decided not to sell their products at Sally Beauty Supply. They also claimed that the product is inferior to their own and is sold at a much lower cost.

When explaining why they filed the complaint, co-founder Kim Etheredge said, "We've worked hard to build the reputation of the Mixed Chicks product as one of high quality. We want our clients to know that the Mixed Silk products have no connection with our products, and Mixed Chicks has not endorsed or authorized them."

The jury awarded Mixed Chicks $8 million in damages on November 2. Sally Beauty offered the $8.5 million settlement in anticipation of a request for attorney's fees and disgorgement enhancements. Sally Beauty also agreed to stop selling the infringing products as part of the settlement.

Mixed Chicks' trademark attorney hopes that the case will encourage smaller companies to fight against those that infringe trademarks despite the high cost of litigation.

"Fighting a large company is always an economic decision, but if the plaintiff has been injured, generally juries and judges get it right, so [smaller companies] should have faith in the process," Parker said.

Former Frontman Fights for VILLAGE PEOPLE Trademark

November 15, 2012,

concert.jpgCalifornia - The Federal Circuit stood by the TTAB's decision to refuse cancellation of the VILLAGE PEOPLE live music trademark.

Karen Willis, wife and agent of former Village People frontman Victor Willis, filed three total petitions for cancellation to cancel three separate registrations with the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board. Two registrations were for live music and one was for recorded music. Willis, who is representing herself pro se, pleaded claims of fraud, abandonment, and genericness in each of the three proceedings.

Willis admits the group has used the band name and logo as recently as 2010 to promote shows. However, she claims that these shows do not count as continued usage because the members of the band were lip-syncing and therefore are not a real "musical and vocal group."

The TTAB and the Federal Circuit did not agree. They both stated that a group is not disqualified as a "musical and vocal group" just because a band lip-syncs and does not play their own instruments. Under the same reasoning, Willis' claims that the trademark had been fraudulently obtained twas dismissed.

The court also dismissed Willis' claim that the trademark should be cancelled for genericness because "Village People" had become a common term for live musical performances.

Though Willis has not been successful with the TTAB or the Federal Circuit in getting the two live music trademarks cancelled, she is still working to have the recorded music trademark cancelled. In the same proceedings where it ruled on the live music trademarks, the TTAB ruled that there was a significant dispute of material fact regarding whether or not Can't Stop Productions, Inc., the owner of the trademarks, had continuously used the trademark to sell recorded music. For these reasons, the TTAB allowed Willis to amend and refile her abandonment claim and certain fraud claims for as to the the recorded music registration.

Willis and her husband have engaged in other intellectual property battles with Can't Stop Productions. Due to a decades-old change in the Copyright Act, Victor Willis won a copyright termination dispute against it last May which allowed Willis to recover rights to "YMCA," "In the Navy," and other songs.

LGBT Fraternity Sues Upstart Chapter For Trademark Infringement

October 26, 2012,

university_campus.jpgCalifornia - A collegiate fraternal organization dedicated to the interests of lesbian, gay, bisexual and transgender students filed a trademark infringement lawsuit on Wednesday against a new fraternity at the University of California at Santa Cruz that it says is using a confusingly similar name.

Delta Lambda Phi National Social Fraternity was founded in 1986, and has used the trademark for its name in commerce since at least as early as 1988 and the acronym DLP trademark since 2001, according to its complaint in Oregon federal court. The fraternity currently has thirty chapters located across the U.S. and Canada.

In 2005 a group of unaffiliated gay students at UC Santa Cruz attended a conference focusing on gay issues, where they were exposed to Delta Lambda Phi. The students then formed the defendant fraternity, Delta Lambda Psi at UC Santa Cruz that same year.

Shortly thereafter, Delta Lambda Psi began using its name and the acronym in the Santa Cruz area to promote and identify itself as a college social organization aimed at gay, bisexual, transgender, and progressive students. Although Delta Lambda Phi has chapters at several other California universities, it does not have a presence at UC Santa Cruz.

"Defendant's use of a name that differs by only a single letter from plaintiff's name has already caused many examples of actual confusion," the complaint says. "This confusion has been compounded by defendant's use of DLP to identify itself on Twitter, MySpace, and in its founding documents."

Delta Lambda Psi has also shown that it intends to expand its use of the infringing trademarks at other universities, by opening at least one new chapter at the University of Oregon in Eugene.

"This use and expansion has caused and will cause immediate and irreparable harm to plaintiff," the complaint says.

Delta Lambda Phi is seeking an injunction prohibiting Delta Lambda Psi from using the infringing trademarks or any others that are confusingly similar to the plaintiffs' trademarks in connection with its Greek social organization, as well as to indicate membership within its Greek social organization. It is also seeking damages, costs and attorneys' fees.

Tiffany Sues Texas Counterfeiter For Trademark Infringement

October 24, 2012,

diamond_ring.jpgCalifornia -- Tiffany LLC filed a complaint in Texas federal court on Monday against an online retailer it accuses of ripping off its trademarks in selling counterfeit bracelets, necklaces and other jewelry.

Olga Sanchez, who operates Bag Fashion Under God, Elegant Bags, and, is directly and personally engaging in the sale of counterfeit products, Tiffany says.

Tiffany is in the business of manufacturing and selling high-quality jewelry including bracelets, necklaces, earrings and other goods under its federally registered trademarks for the Tiffany name. The company spends millions of dollars annually in connection with its trademark enforcement efforts, including legal fees, investigative fees and support mechanisms for law enforcement, it says.

Sanchez is advertising, distributing and selling counterfeit products including the aforementioned pieces of jewelry bearing trademarks that are exact copies or colorable imitations of those belonging to Tiffany, according to the complaint.

Her products are far inferior to Tiffany's genuine goods, but she is actively selling substantial quantities of merchandise with the knowledge that they will be mistaken for the real deal, Tiffany says.

"In so advertising these products, defendants improperly and unlawfully use plaintiff's Tiffany marks, and they have correspondingly misappropriated plaintiff's advertising ideas and business styles used in connection with the advertisement and sale of plaintiff's genuine products," the complaint says.

Sanchez's infringement and disparagement of Tiffany's trademark rights does not merely amount to an incorrect description of the goods or a failure of the goods to conform to advertised quality or performance, Tiffany says.

"Instead, by engaging in their wrongful activities, defendants are, upon information and belief, actively defrauding both plaintiff and the consuming public for defendants' own benefit," the complaint says.

Sanchez is knowingly and intentionally infringing the trademarks, or at least acting with reckless disregard or willful blindness to Tiffany's rights, for the purpose of trading on Tiffany's established reputation and goodwill, the company says.

Tiffany is seeking damages of $2 million for each counterfeit Tiffany mark per type of good sold or distributed, as well as treble damages, interest, costs and attorneys' fees.

DC Deli Sues Rival Pizzeria For Trademark Infringement

October 19, 2012,

sandwich-footlong.jpg California - The owners of the venerable Washington, D.C. institution Wisemiller's Grocery and Deli, affectionately known as Wisey's to its customers, sued a neighboring pizza parlor last month for ripping off its trademark name, logo and menu design in what Wisey's called a futile effort to promote its markedly inferior food offerings.

The pizzeria's actions present an "exceptionally blatant" case of intentional trademark infringement and unfair competition, Wisey's #1 LLC said in its September complaint against Davar Ashgrizzadeh and his business Nimellis Pizzeria LLC.

The pizzeria, which the Wisey's complaint calls "markedly inferior" to its business, was formerly known as Cafe Romeo's and is currently doing business as Wise Eats Cafe or simply Wiseats as of earlier this year.

"Defendants did not open another location, expand or even alter Cafe Romeo's," the complaint says. "Defendants simply began marketing their inferior but competing products and services under the confusingly similar Wiseats mark -- using a menu that mimics Wisey's distinctive and well-known menu in a manner that borders on counterfeiting -- for the sole purpose of trafficking of of Wisey's goodwill and reputation, and the strength of the Wisey's mark and menu."

Wisey's is a popular DC restaurant well-known for its carryout and delivery services, which it has marketed extensively and continuously in the DC metropolitan area for many years under the federally registered Wisey's trademark and its accompanying distinctive menu.

Ashgrizzadeh and his pizzeria, meanwhile, did not even try to disguise their willful infringement, instead choosing to "broadcast their bad faith" by using a nearly identical logo design and graphic, with a slogan that erases any remaining doubts regarding their knowledge and malicious intent, according to Wisey's.

"The willful and malicious nature of the defendants' conduct is beyond question," the complaint says.

Whereas Wisey's operates under the slogan "Eat Right. Eat Wisey's," Wiseats is now using the slogan "Eat Wise. Eat Wiseats," the complaint says. The logos also both feature the similar names and slogans in a similar arrangement within a green oval.

"Defendants are intentionally defrauding DC-area consumers and maliciously profiting by, quite literally, brazenly stealing and injuring the reputation and goodwill that Wisey's has spent years building," Wisey's says. "Defendants are competing in the exact same product market from a location on the exact same street as Wisey's, selling a knockoff product and hoping that unsuspecting consumers will not notice until it is too late to cancel their order."

Groupon Trademark Judge Admonishes Groupion For Seeking Recusal

October 17, 2012,

groupon.jpg California - Groupion LLC was scolded Monday by a California federal judge for filing a motion to have the judge recused based on flimsy accusations of bias due to an adverse ruling against it in Groupon Inc.'s trademark infringement and cybersquatting lawsuit against the software company.

Groupion sought to disqualify Judge Jeffrey White on the grounds that he reviewed and considered documents that they contend are confidential settlement offers.

Judge White ruled that the motion to disqualify was untimely, coming as it did on the eve of trial, but even if it wasn't, it would have failed on the merits, he said.

"A motion for disqualification based entirely from the district court judge's adverse ruling is not an adequate basis for recusal," the judge said.

Groupion's motion was premised on the court's consideration of documents which were officially filed in the case and form the basis of Groupon's cybersquatting claim. The company has not demonstrated a bias or prejudice which stems from an extrajudicial source, and the federal rules of civil procedure do not bar consideration of those settlement offers, Judge White said.

Groupon's cybersquatting claim was not a part of the settlement negotiations because it was not yet in existence, he noted. The rule cited is also inapplicable to communications when they are admitted to prove a wrong that was committed in the course of settlement discussions, he said.

Judge White reserved judgment for the moment on Groupion's accompanying motion for a jury trial on Groupon's cancellation claim, and refused its motion to have Groupion's founder dismissed from the case for lack of jurisdiction.

"The court admonishes counter-defendants to not file any more motions without following the proper procedures and without supporting such motions with legal authority and evidence," he said.

Groupion originally sued Groupon for trademark infringement in February 2011. Groupon fired back with cybersquatting claims earlier this year over Groupion's purchase of European domain names infringing its trademarks.

Blue Cross Sues Universal Health Services For Logo Trademark Infringement

October 15, 2012,

medic_alert_bracelet.jpg California - Universal Health Services Inc. came under fire from the Blue Cross and Blue Shield Association in Illinois federal court on Thursday for misappropriating the association's trademark shades of blue for its own cross logo, in direct breach of a previous settlement barring the use.

UHS has long known about BCBSA's trademark rights to the Blue Cross logo, in part due to its involvement in a previous lawsuit over the trademark, but is now violating the settlement agreement that ended that lawsuit, according to BCBSA's complaint against UHS, UHS of Delaware Inc. and Wellington Regional Medical Center Inc.

BCBSA is a nonprofit association encompassing the oldest and largest family of health benefits companies in the U.S. The Blue Cross and Blue Shield brands are the most recognized brands in the nation's entire health insurance industry, the association claims.

The association owns design logo and service trademarks for its namesake images, as well as the word trademarks Blue Cross and Blue Shield, and licenses those trademarks to its member health plans for healthcare insurance, services, financing and related goods and services.

BCBSA has been using those trademarks since at least as early as 1934 for Blue Cross and 1939 for Blue Shield, and owns over 240 valid federal trademark registrations for their use, which have become incontestable, it says. It also owns similar trademark registrations in 170 countries worldwide under the "Blue family" of names and trademarks, according to the complaint.

UHS, meanwhile, is one of the nation's largest healthcare management companies and operates hospitals and health and surgery centers across the U.S. UHS of Delaware is the management arm of the system, which licenses its trademarks to all UHS subsidiaries.

From 2003 through 2009 BCBSA sent the healthcare provider a series of letters regarding UHS's trademarks consisting of a cross design and accompanying application for federal registration of those trademarks, advising UHS of the association's rights in the Blue Cross trademarks and asking whether UHS's cross design would be blue. UHS claimed it did not intend to use its cross design in any color or shade of blue, according to the association.

The association eventually sued UHS in the Northern District of Illinois in December 2009 for trademark infringement, false designation of origin and unfair competition. That lawsuit was settled in July 2011 with an agreement that provided UHS would stop using one of its particular cross designs in the color blue, and that the entire UHS system would refrain from using any blue-shaded cross.

UHS continued to use another cross design in blue, though, well after the settlement agreement was executed, BCBSA now says. The company is also trying to trademark a cross design that would encompass all colors, including blue, the association says.

Philly Deli Refuses To Give Up Fight For Cheesesteak Trademark, Sues PTO

October 9, 2012,

cheesesteak.jpgCalifornia - A Philadelphia deli sued U.S. Patent and Trademark Office Director David Kappos on Thursday after failing to convince the PTO or the office's Trademark Trial and Appeal Board to let it trademark the phrase "Philadelphia's Cheesesteak."

The deli is seeking a court declaration that the trademark is valid and fully enforceable and an accompanying order requiring Kappos to issue a registration for it on the Principal Register, according to TTABlog, which reported the lawsuit on Monday.
Campo's Deli at Market Inc. is a local Philadelphia mom and pop cheesesteak and hoagie shop run by Mike and Denise Campo and their family, with satellite locations at the Phillies stadium and the Flyers and Sixers arena.

Campo's originally filed its application with the PTO for registration of the trademark "Philadelphia's Cheesesteak" in June 2009. The PTO examining attorney ultimately refused registration, and Campo's appealed to the TTAB in November 2010.
In August the TTAB affirmed the PTO's justifications for refusing the trademark on the grounds of likelihood of confusion with previous marks as well as geographic refusal.
Campo's says it has been using the trademark since at least January 2009, strictly in association with its sale of cheesesteaks in a retail environment for direct and immediate consumption by the purchasing public.

The trademark describes "a sandwich so superlative, it could only be called 'Philadelphia's Cheesesteak,'" according to the complaint. The deli is not trying to improperly control the phrase "Philadelphia Cheesesteak," which is simply a generic term to describe a type of sandwich, it says.

"The difference in the two phrases, of course, is an ('s) which demarcates a particular kind of gloriously gluttonous sandwich provided only by the plaintiff -- not just a Philadelphia Cheesesteak, but 'Philadelphia's Cheesesteak,'" the complaint says.
The trademark is "descriptive of the unique and tremendously delicious goods [Campo's] offers for sale to the famished masses, and is not, by contrast, an indication of the geographic origin of the sandwich, which would otherwise prohibit registration," it says.

The deli needs to register the trademark in order to pursue its franchising aspirations, so that the purchasing public knows that it provides a particular kind of Philadelphia Cheesesteak "of such a tremendous quality, such a gustatory delight and such a propensity for myocardial infarction that it could only be called 'Philadelphia's Cheesesteak' -- the very best example of what is otherwise a very common sandwich," the complaint says.

Campo's could use the trademark at any store in any future location in the country, since it has nothing to do with the sandwich's geographic origin, the deli says.
"No customer at any such prospective location would be under the misconception that the sandwich purchased by the beach from a Campo's store is literally prepared in Philadelphia when, instead, it is prepared on location, at each satellite location, over a steaming hot griddle directly in front of the consumer," the complaint says.

In the TTAB's ruling, the board agreed with the PTO that the trademark is confusingly similar to three registered trademarks including "Philadelphia Cheesesteak Co.," and that the trademark is primarily descriptive.

But the existing trademarks concern the identification of a particular company specializing in prepared foods, namely meat, the complaint says. There is no likelihood of confusion between the requested trademark for a type of sandwich and the three trademarks for a company which produces wholesale sliced meat, it says.

Although the PTO has also refused to register the trademark on the grounds that the use of "Philadelphia's" is too geographically descriptive, the office has previously approved registrations for trademarks including "Philadelphia's Soft Rock Station," "Philadelphia's Big League Sandwich" and "Philadelphia's Home Town Builder," according to Campo's.

National Pork Board Lashes Out At "Other White Meat" Trademark Lawsuit

September 27, 2012,

pig.jpgCalifornia - The National Pork Board on Monday called the Humane Society of the United States' new lawsuit over the board's purchase of the trademark "The Other White Meat" an unwarranted challenge to a legitimate business transaction.

The Humane Society filed a complaint against the U.S. Department of Agriculture on Monday in District of Columbia federal over the department's "unlawful authorizations" for the board's purchase of the trademark from a pork industry political lobbying group.
The ongoing payments of $3 million dollars per year under the terms of the trademark purchase agreement violate the Pork Promotion, Research, and Consumer Information Act of 1985 as well as USDA guidelines, according to the Humane Society.

The trademark purchase allows the board and the lobbying group to evade federal restrictions against the use of pork fee dollars for purposes of influencing legislation and government policy, the Humane Society says.

The National Pork Board is a quasi-governmental entity created as a result of Congress' passage of the Pork Act. Under the Pork Act and its implementing regulations, the Board collects a mandatory checkoff assessment, which is a per-capita fee on all hogs sold or imported in the United States.

The board purchased the trademark in 2006 from the National Pork Producers Council, a political lobbying group, which created the trademark prior to the formation of the National Pork Board in 1986. The board subsequently assumed all marketing responsibilities for pork, it said.

"I find it unusual that HSUS is filing suit now over a decision that was made and approved more than six years ago," board CEO Chris Novak said.

The sale price, agreed to by both boards and approved by the secretary of agriculture, was $35 million. NPPC agreed to finance the payments over 20 years, making the payment from the National Pork Board $3 million annually for a total price of $60 million.
"'The Other White Meat' is an incredibly valuable asset, which is why the board in 2006 took steps to assure it would always be owned by pork producers," Novak said. "In 2000, Northwestern University conducted a study that determined that The Other White Meat was one of the five most recognizable taglines in contemporary advertising. So it was important to producers that it be protected."

Even though the board has moved on to using another tagline in its advertising, it continues to use the trademark The Other White Meat. The phrase will be featured by the National Pork Board at meetings of the American Dietetic Association and with the National Pork Board's Advisory Panel of Retail Dietitians, the board said.
The NPPC also criticized the lawsuit itself on Monday.

"NPPC is reviewing the HSUS complaint, but it appears there is no legal merit to this claim, and it is another desperate attempt by the radical activist group to severely curtail animal agriculture and take away consumer food choices," NPPC CEO Neil Dierks said.

AMPAS Wants Answers From Google In GoDaddy Trademark Cybersquatting Fight

September 25, 2012,

movie-film-cannister.jpgCalifornia - The Academy of Motion Picture Arts and Sciences took a shot at Google Inc. last week for refusing to pony up documents and depositions for AMPAS's trademark infringement lawsuit against Inc. over Oscar-related domain name cybersquatting, saying Google's arguments in opposition to being dragged into the conflict are unavailing.

AMPAS sued GoDaddy in May 2010 in the Central District of California alleging it was registering, monetizing and trafficking in web domain names that are confusingly similar to the Academy's protected trademarks.

GoDaddy and the domain name registrants achieve monetary gain by using the trademarks to knowingly divert internet traffic away from legitimate Oscar-related websites to infringing domains that are merely "parked pages," according to the Academy's most recent amended complaint, filed last October. Parked domains serve no real business purpose or substantive content, existing solely for the display of revenue-generating ads.

Both AMPAS and GoDaddy are now asking a judge in the Northern District of California to compel Google to provide evidence about the role of its "AdSense for Domains" advertising program in the alleged trademark infringement.

Google is wrong to argue that AMPAS's motion is untimely, especially because a closer look at the timeline reveals that AMPAS spent the 12 months from April 2011 to April 2012 trying in good faith to avoid having to depose Google, AMPAS said in its Sept. 17 reply to Google's opposition.

Google is also incorrect in claiming that the deposition topics are not relevant to the Anti-Cybersquatting Protection Act based on the premise that a court can determine whether a domain name violates the ACPA without referring to the content on the associated website, AMPAS said.

Under the "bad faith intent to profit" prong of the ACPA, courts consistently look to the content of the websites associated with the accused domain name, according to AMPAS. For example, if the website in question were merely used to critique the trademark holder's goods or services, then no ACPA violation would follow, regardless of what the domain name was.

"Google's position simply misstates the law," the Academy said. "Burying its head in the sand, Google tries to simply wish away the "bad faith intent to profit" prong of the ACPA."
Google argued that AMPAS's deposition topics are unduly burdensome upon it, but the company also only previously identified 4 witnesses related to the GoDaddy programs at issue, according to the Academy.

"Recognizing this, Google sets up a "straw man" -- unfairly and obviously broadening AMPAS's deposition topics -- while ignoring AMPAS's narrowing of the topics during the parties' meeting and conferring process," AMPAS said.

Apple Can't Trademark Mobile App Music Icon: TTAB

September 21, 2012,

iPad.jpgCalifornia - Apple Inc. on Wednesday failed in its efforts to persuade the U.S. Patent and Trademark Office to allow it to trademark the square, orange music player app icon familiar to iPhone and iPad users.

The Trademark Trial and Appeal board ruled that Apple's proposed trademark for the icon is too similar to a trademark already registered to the now-shuttered MP3 download service iLike, which also features a double musical note inside an orange square.
Apple sought to register its icon in relation to computer software used to play recorded audio content, sold as a feature of mobile devices like the iPad and iPhone.

The trademark examining attorney refused registration to Apple on the grounds that the proposed trademark is likely to cause confusion with iLike's registered trademark. iLike's trademark is registered in relation to providing temporary use of software for adding music and video profiles on the internet, listening to MP3s and sharing MP3s and music playlists with others.

The appropriate test is not whether the trademarks can be distinguished when subjected to a side-by-side comparison, but whether they are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods and services offered under the respective trademarks is likely to result, the TTAB said.
Though the trademarks are not identical, they both comprise a double musical note in an four-sided orange box, the TTAB noted.

"The basic similarities in the marks outweigh any specific differences that might be apparent upon a side-by-side comparison," the board said. "The differences in the details of the respective depictions of the double musical notes and their background designs do not suffice to distinguish the marks in terms of their overall commercial impressions."

Apple's software and iLike's services, meanwhile, perform similar functions in relation to controlling digital music, according to the board.
Apple argued that consumers looking for MP3 software are careful to distinguish between competing services since, among other reasons, many such services require the entry of personal information.

"One need only look around at any public gathering, or even just walking down the street, and you will notice many people with their handheld devices," the TTAB said. "While this group of people may include discriminating consumers, it also includes those who are not very careful."

Google Accused Of Ripping Off Slogan For Nexus 7 Tablet Ads

September 20, 2012,

nexus7.jpgCalifornia - Market Street Press Inc. slapped Google Inc. with a trademark infringement suit last week alleging Google's ad campaign for its new Nexus 7 tablet infringes Market Street's trademark for the phrase "The Playground Is Open."

Market Street has been using the trademark for over four years, whereas Google has only recently picked it up for the new ad campaign, the complaint in the Middle District of North Carolina, filed Sept. 12, says.

"Notwithstanding Market Street's prior trademark rights, and in violation of Market Street's rights, Google embarked upon a massive advertising campaign utilizing, and otherwise adopted, the identical mark The Playground Is Open for its newly introduced Nexus 7 tablet, resulting in unfair competition, likely confusion, and likely reverse confusion," Market Street says.

Market Street designs, prints and sells a wide variety of promotional, marketing, office and creative products. Its offerings range from business products like marketing banners, pens, deskpads and paper cubes, to ping pong balls and puzzle cubes, to computer peripherals and accessories like USB flash drives, USB key chains, mouse pads and kiosks for tablets, computer screens and other display screens.

The company says it adopted "The Playground Is Open" as a trademark and indicator of source for all of its services and products at least as early as January 2008. Market Street filed a federal application to officially register the trademark on Aug. 20, which remains pending.

Google recently selected, adopted and began using the trademark in connection with its new Nexus 7 tablet, and subsequently launched a multimillion dollar nationwide promotional campaign advertising the tablet with the trademark, Market Street says. Infringing uses occurred during the widely watched television coverage of the 2012 Summer Olympics, for example, the company says.

Due to that ad campaign, the media and general public have quickly come to associate the trademark phrase with Google rather than Market Street, the complaint alleges. Google's use of the trademark will make Market Street's use of the same trademark look like it is in some way connected with Google, or even infringing Google's trademark rights in an effort to capitalize on Google's reputation, Market Street says.

Because of Google's disproportionately larger size, advertising budget, resources, promotion campaign and dominance on the internet, its use of the trademark will continue to "overwhelm and swamp" Market Street's use of the phrase, the complaint says.

Eleventh Circuit Sends Back Rival Orders Of Malta Trademark Infringement Case

September 19, 2012,

Order_of_Malta.jpgCalifornia - The Eleventh Circuit last week issued a mixed ruling remanding a trademark infringement between two religious charitable organizations over the name "Order of Malta" back to a district court for further consideration.

The Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta, the plaintiff in the case, is a religious order of the Roman Catholic Church that undertakes charitable work internationally.

The Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical Order, meanwhile, the defendant order, is also a charitable organization with an expressly ecumenical, rather than Catholic, association. It incorporated in Florida in 2005, and is associated with a parent organization which was first incorporated in the United States in 1911.

The plaintiff order sued the Florida Priory in July 2009 accusing it of trademark infringement and false advertising under the Lanham Act, as well as state law claims for unfair competition and trade practices. The district court ruled in favor of the Florida Priory on all counts.

The district court clearly erred, though, in evaluating the Florida Priory's counterclaim that the plaintiff order committed fraud on the U.S. Patent and Trademark Office, the Eleventh Circuit ruled on Sept. 11. The appeals court reversed the cancellation of the four word marks, Registration Numbers 2,783,933, 2,783,934, 2,915,824 and 3,056,803.
"Because we were not presented with sufficient findings to review the Lanham Act infringement claims, we vacate the district court's ruling on that issue and remand for it to consider, under the correct legal standard, confusion with respect to all of plaintiff order's marks--including the four word marks," the circuit court said.

It also vacated the district court's ruling on the state law claims, but affirmed the district court's finding on the Lanham Act false advertising claim in favor of The Florida Priory.
The plaintiff order claims to have been founded in Jerusalem in the eleventh century. It relocated to the city of Acre and later to the island of Rhodes, where it was known as the Knights of Rhodes. After spending about two hundred years on the island of Rhodes, the group relocated to Malta, becoming the Order of Malta.

Hot Dog Purveyor Loses Out In Sinatra Estate's Trademark Challenge

September 13, 2012,

franks-anatra.jpgCalifornia -- The estate of Frank Sinatra on Wednesday shut down a hot dog truck owner's attempt to trademark the phrase "Franks Anatra" with the U.S. Patent and Trademark Office, as the PTO's Trademark Trial and Appeal Board sustained the estate's challenge and rejected the trademark application.

Frank Sinatra Enterprises LLC alleged Bill Loizon's application for the Franks Anatra trademark would create a likelihood of confusion with its own previously registered trademarks for Frank Sinatra's name, falsely suggest a connection with Sinatra and dilute the estate's trademarks.

The estate owns registered trademarks for Sinatra's name in connection with entertainment services including musical performances rendered by a singer, as well as in connection with prepared sauces.

Federal Circuit law dictates that when a trademark attains dictionary recognition as part of the language, it can be taken to be reasonably famous, the TTAB said. Sinatra has his own entries in reference works including the Random House Dictionary of the English Language and the Encyclopedia Britannica, it noted.

Loizon's desired trademark is a close approximation of the name Frank Sinatra, and is also phonetically equivalent, which reinforces the visual similarity, the board ruled.
Loizon argued that Franks Anatra was not a close enough approximation because the "Franks" portion refers to frankfurters, hot dogs and other similar food items, and "Anatra" means "duck" or "drake" in Italian.

The TTAB disagreed, saying there is nothing inherent in the trademark or Loizon's marketing to lead consumers to translate the word Anatra to duck.
"Furthermore, we do not understand how applicant's mark engenders the commercial impression relating to anything other than a play on the Frank Sinatra name," the board said.

Loizon testified, "The name of my business is Franks Anatra. Franks as in frankfurter, Anatra as in People's Republic of Anatra," "an independent island nation" that is "all about the hot dogs," according to the board. Loizon told the board he has placed the badge of his country on the door of his truck.

"They see our badge of our country, our symbol on the door that says People's Republic of Anatra," Loizon testified. "And it's a colorful logo that I created, and it's on the hood with some Latin underneath it. It looks very official, and it sells a lot of people. They believe it. They walk away saying, 'Wow, Anatra, I've never heard of the place.'"
Loizon also admitted, though, that his island nation imagery is not self-evident and that he has to explain it to customers, the TTAB said.

"Suffice it to say, we find applicant's explanation for choosing the mark Franks Anatra to be obscure and find it unlikely that consumers will understand it," the board said.