California Trademark Attorney® Blog

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.

2nd Circuit Affirms Validity Of Louboutin's Trademark Red Soles

September 5, 2012,

shoes-redsoles.jpgCalifornia - The Second Circuit on Wednesday ruled that French high fashion shoemaker Christian Louboutin is entitled to trademark protection for the iconic red soles on its shoes, dealing a blow to competing fashion house Yves Saint Laurent in its bid to outfox Louboutin's infringement claims.

Louboutin had asked the appeals court to review a New York district judge's August 2011 denial of its motion for a preliminary injunction against YSL's alleged trademark infringement. The district court found that Louboutin's trademark was likely not enforceable and declined to enter a preliminary injunction against YSL's use of the trademark.

But the district court's holding that a single color can never serve as a trademark in the fashion industry is inconsistent with the Supreme Court's decision in Qualitex Co. v. Jacobson Products Co., and so the lower court erred by resting its denial of Louboutin's preliminary injunction motion on that ground, the Second Circuit said.

The appeals court concluded that Louboutin's trademark, consisting of a red, lacquered outsole on a high fashion woman's shoe, has acquired limited "secondary meaning" as a distinctive symbol that identifies the Louboutin brand.

The Second Circuit limited the trademark to uses in which the red outsole contrasts with the color of the remainder of the shoe, ruling that only the modified trademark is entitled to trademark protection.

Because Louboutin tried to enjoin YSL from using a red sole as part of a monochrome red shoe, the appeals court partially affirmed the district court's order insofar as it declined to enjoin the use of red lacquered outsoles in all situations. It partially reversed the district court's ruling insofar as it purported to deny trademark protection to Louboutin's use of contrasting red lacquered outsoles.

Louboutin, a designer of high-fashion women's footwear and accessories, has since 1992 painted the "outsoles" of his women's high-heeled shoes with a high-gloss red lacquer. He registered the red lacquered outsole as a trademark with the United States Patent and Trademark Office in 2008.

In 2011 YSL prepared to market a line of monochrome shoes in purple, green, yellow, and red. Louboutin learned that YSL was marketing and selling a monochrome red shoe with a red sole, requested the removal of the allegedly infringing shoes from the market, and briefly entered into negotiations with YSL in order to avert litigation. Louboutin filed his trademark infringement complaint against YSL in April 2011, after those negotiations failed.

Sam Raimi Wins Trademark Injunction Against Rival Evil Dead Filmmaker

August 29, 2012,

film.jpgCalifornia - A Los Angeles federal judge last week handed down a permanent injunction in favor of the filmmaker Sam Raimi, barring a rival film production studio from making an unauthorized sequel to the cult classic Evil Dead horror films.

Raimi's company Renaissance Pictures Ltd. sued Award Pictures LLC in May alleging the latter production company was threatening to infringe on the trademarks for the phrase "Evil Dead" in relation to motion pictures.

Judge Dale S. Fisher of the Central District of California granted Renaissance a default judgment on Aug. 23 prohibiting Award from using the Evil Dead name.

Renaissance was formed in 1979 by three general partners -- writer-director-producer Sam Raimi, producer Robert Tapert and actor-producer Bruce Campbell -- for the purpose of producing the trio's first motion picture, The Evil Dead.

Since its formation, Renaissance has continued to produce numerous motion pictures, including the films The Evil Dead, Evil Dead II,Evil Dead Ill: Army of Darkness; Darkman, Hard Target, and Timecop, as well as the television series Hercules: The Legendary Journeys and Xena: Warrior Princess, according to the complaint.

Raimi, who directed all of the Evil Dead films, "is one of the most sought-after directors in Hollywood," according to the complaint. The three Spiderman films he directed set opening day box office records upon their theatrical release in the United States and all three are included in the 25 highest-grossing domestic films of all time, the complaint says.

Renaissance claims it received a letter in 2004 from Award Pictures asserting its right to make a motion picture entitled Evil Dead 4: Consequences. Renaissance responded that any attempt to make a motion picture under the Evil Dead name and mark would constitute a violation of Renaissance's copyright and trademark rights.

Following the exchange of letters, Renaissance did not hear from Award again until it came to Renaissance's attention that Award had announced on its website an "upcoming series of Evil Dead motion pictures" with Evil Dead: Genesis of the Necronomicon as the first installment in development.

Additionally, in February, Award filed a notice of opposition with the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board, against Renaissance's 2010 application to register the Evil Dead trademark, alleging that Award had a bona fide intent to use the title in its upcoming motion picture productions.

Award is using Renaissance's Evil Dead mark "for the improper purpose of summoning interest in its own business and films by falsely associating itself with Renaissance's cult hits to induce investors," the complaint asserts.

In 2011 the Renaissance team announced that they would be remaking the original The Evil Dead, once again co-written by Raimi and co-produced by Raimi, Campbell and Tapert. Evil Dead LLC, a company set up by the three men and licensed by Renaissance to use the Evil Dead trademark, is currently in pre-production on the new film, which is expected to see release in 2013.

Jersey Shore's "Situation" Battles With MTV For Catchphrase TMs

August 23, 2012,

mtv logo.jpgCalifornia - Mike "The Situation" Sorrentino of MTV's hit reality series "Jersey Shore" is embroiled in a feud with MTV parent Viacom over the trademark rights to his popular catchphrases from the show.

The catchphrases include "GTL," an acronym for "gym, tanning and laundry," and "twinning," a reference to seducing a pair of twins. The phrases are Viacom's property by authority of Sorrentino's "Jersey Shore" participation agreement, Viacom argued in an opposition lodged last week with the Trademark Trial and Appeal Board in response to Sorrentino's trademark application.

Sorrentino is attempting to trademark "twinning" in reference to men's and women's apparel, including T- shirts, tank tops, long sleeve t-shirts, sweat shirts, baseball hats, wool hats, shorts, panties, underwear and footwear, according to Viacom's opposition.

But Sorrentino is not and was not, at the time of the filing of its application for that registration, the rightful owner of the claimed mark, Viacom claims. The company already owns trademarks for the phrase "twinning" and "GTL," it says.

Sorrentino's participation agreement for the show, moreover, explicitly says he does not have the right to feature quotes from the show on t-shirts, according to Viacom. By signing the participant agreement, Sorrentino and all the other cast members disclaimed all rights to intellectual property created in relation to "Jersey Shore," including all trademark rights, Viacom's opposition says.

Viacom's attorneys did not respond to emails seeking comment.

During an August 2011 episode of Jersey Shore, Sorrentino became romantically interested in a woman and her twin sister. When one of the show's interviewers asked him, "Is it a twin for the win right now?", Sorrentino responded, "Winning. Twinning. Now, that's a good one. Oh, man, that's a good one, yeah. That's, that's good one, twinning. Twinning, that's a good one."

Cast member Paul DelVecchio, known as Pauly D, also said on camera during the episode, "When you get twins it's cool, so you're winning, but you're twinning because you got two twin chicks."

Sorrentino placed himself at the center of another trademark dispute last year when he filed a $4 million infringement suit against Abercrombie & Fitch. A&F allegedly sparked the conflict by offering him $10,000 to stop wearing its clothing on the show, while simultaneously selling its own line of merchandise featuring his catchphrases.

California Based North Face Sues Tongue-In-Cheek Competitor For Trademark Infringement

August 10, 2012,

hiker.jpgCalifornia - A wide portion of the American public recognizes North Face, the outdoor lifestyle company, and its distinctive logo trademark. However, that distinctive logo became the "butt" of a Missouri teenager's parody when he created a new brand in 2007 that encouraged consumers to "Never stop relaxing". The South Butt was the brainchild of Jimmy Winkelmann, as an alternative to "sheep-like" following of fashion trends. The Alameda, California based retailer did not find anything funny about the spoof of its trademarks and took Winkelmann and The South Butt, LLC to court for trademark infringement.

On April 10, 2010, the United States District Court for the Southern District of Missouri, Eastern Division, issued a permanent injunction against The South Butt and its creators. The injunction prohibited the use of the offending South Butt trademarks and designs including, "The South Butt, Never Stop Relaxing". At the conclusion of the original lawsuit, The South Butt agreed to drop its brand and cease using any and all of the offending logos.

However, the saga did not end when The South Butt was disbanded. To the delight of Winkelmann and his family, the publicity created by the lawsuit generated increased sales and created a show of support from the surrounding community. Bolstered by family and friends, The South Butt creator used the lawsuit as a marketing ploy and formed a new company, Why Climb Mountains, LLC. As part of its new identity, the Missouri based company created Butt Face brand, which again copies the look and feel of the North Face trademark.

Like the previous case, Winkelmann's lawyer is using the "parody defense". Trademark parody involves the appropriation of another company's trademark that is well known in popular culture, and then using it to create something new for humorous effect or social commentary. In a parody defense, a defendant argues that consumers know the real difference between the two brands and that use of a copycat trademark does not dilute or tarnish the original trademark. Accordingly, Winkelmann claims that consumers know the difference between the two brands, and that Butt Face represents a protected First Amendment parody of The North Face's trademark rights.

Representatives for North Face claim that the Missouri Company is blatantly copying its trademarks and disregarding the court's previous holding. To support its case, North Face submitted documentation showing that 35% percent of consumers believe the Butt Face logo is in some way connected to the North Face trademark. North is asking for Winkelmann and his company to be held in contempt of court, and is seeking a disgorgement of profits and costs of suit.

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."

Baseball Player's Trademark "That's A Clown Question, Bro" Gets Filed With USPTO

June 26, 2012,

beer-bottle-pouring.jpgCalifornia - On June 12, Bryce Harper, a right fielder for the Washington Nationals, uttered the instantly popular "That's A Clown Question, Bro" catchphrase after a game against the Toronto Blue Jays. Harper, who happens to be 19 years old and Mormon, was asked after the game if he would enjoy a beer. With a great deal of annoyance, the Nevada native answered, "That's a clown question, Bro!" In all fairness, the reporter was Canadian and the drinking age in his hometown is only 18. However, the viral buzz instantly caught on, the phrase started popping up everywhere and Harper's camp quickly filed for the phrase with the USPTO on June 13th.

The filing states that the phrase is being registered for use with t-shirts, sweatshirts, jackets, pants, shorts, hats, visors, gloves and shoes. Under Armour, a well-known sports clothing company, is set to begin manufacturing and selling t-shirts bearing the phrase immediately. Additional items will be produced if Harper's management determines that they will sell well. However, given the popularity of Harper and the viral phenomenon, it is likely that the t-shirts and any additional memorabilia bearing the now popular statement will quickly sell out.

Beer was not listed in the trademark application and Denver Beer Company is taking advantage of that fact by beginning sales of a beer named after the phrase. The beer, appropriately named Clown Question Bro Canadian Lager, is set to be on tap in time for the Colorado Rockies series against the Washington Nationals this week and is only being offered in Denver. Priced at five dollars for a 16-ounce draft beer, the brewery claims that the beer will not be offered long term. The Denver base beer company does not anticipate any issues with Harper management regarding the phrase, but they have a back up plan just in case. The beer name will quickly be changed to Clown Question Brau if Harper insists that the beer company stop using the registered phrase.

General Motors Trademarks 'Electra' Again - This Time for an Electric?

June 18, 2012,

automobile-plugin.jpgCalifornia - The world's largest automaker, General Motors, has filed a trademark application with the U.S. Patent & Trademark Office for 'Electra'. The application was filed on June 5, 2012 for "motor land vehicles, namely, automobiles, sport utility vehicles, trucks, vans, engines therefor and structural parts thereof." Although General Motors has been through the ups and downs with the U.S. economy, it remains a huge player in the auto industry.

This will be the second time that GM has pursued the trademark 'Electra'. The automobile giant was first granted ownership of the trademark on November 21, 1989. GM used the trademark for "motor vehicles, namely, automobiles, engines therefor, and structural parts thereof", almost identical to its most recent application filed in June of 2012. The trademark registration for 'Electra', number 1,567,028 was cancelled as of May 28,1996 and along with it went the Buick Electra. Although a fond but distant memory, the Buick Electra put in its time as one of Buick's luxury vehicles for thirty years. This Buick model appealed to many due to its various styles that included a convertible, sedan, and a coupe.

It has been 16 years since the original trademark registration for 'Electra' was cancelled and now enthusiasts are eagerly awaiting to see just what will come of GM's trademark application. Since GM filed the application under section 1(b) - intent to use, this requires GM to have "a bona fide intent to use the trademark in connection with the goods or services listed in the application." This requirement is based on Chapter 37 of the Code of Federal Regulations, Part 2.

The question at hand is if GM will bring the Buick Electra back from the dead with a new age model or will GM surprise us all by using 'Electra' for a new electric model vehicle. Could it be that GM is using a new and upcoming 'Electra' to go electric? Although GM filed in Class 1(b) it has also been rumored in the auto world that the leading auto company filed the trademark 'Electra' mostly head off other automakers from using the once popular vehicle model name.

Military Revokes Approval For Use Of Trademarks On Bibles

June 13, 2012,

bible.jpgCalifornia - The U.S. Military has recently revoked its authorization for use of military trademarks on bibles. In a statement, Navy officials reported that its trademark licensing division underwent a complete revamping in 2011. After reviewing all of its existing trademark agreements, it determined that the use of Navy trademarks on bibles did not meet the new standards. As a result, LifeWay, the company who publishes the military bibles, was notified that its trademark agreement would not be renewed. The Air Force Trademark Licensing Program claims it also withdrew its approval for trademark use in 2011. The Air Force did not allow for the depletion of existing stock, but specified that all copies must be immediately removed. Army and Marine Corps officials made no official comment, but its approvals were also withdrawn.

The Military Religious Freedom Foundation (MRFF) is claiming responsibility for the recent decision regarding the bibles. MRFF claims that it asked for removal of the bibles after receiving over 2000 separate complaints from military personnel. MRFF argues that sanctioning these bibles was a direct conflict with the United States Constitution, as well as a violation of Department of Defense regulations. According to military policy, endorsement of any non-federal entity is strictly prohibited. With that policy in mind, use of military trademarks on the covers of these bibles made the Holman Christian Bible appear as though it was the official bible of the U.S. Military. Because of the current U.S. conflict with fundamentalist Muslims in the Middle East, MRFF also claims that use of the military logos creates a security threat. MRFF insists that the conflict is a cosmic war between Jesus and Allah, and thus military endorsement of bibles is a national security issue.

Despite MRFF claims, the Department of Defense claims that removal of the bibles was strictly the result of a re-evaluation of trademark agreements and policies. However, some religious groups are calling this recent decision a cowardly move. These groups argue that military personnel from as far back as George Washington have used the bible and other religious texts for encouragement and counsel. They are calling removal of the military bibles a "reckless assault on religious liberty" and are demanding a congressional investigation.

The military-themed bibles are a product of B&H Publishing, owned by LifeWay Christian Resources of the Southern Baptist Convention. Lifeway publishes four versions of the Holman Christian Standard Bible, one each for the Army, Air Force, Navy and Marine Corps. Covers for each specific branch of the military include the name and insignia for each specific branch. The bibles reportedly offer devotional material and prayers for military personnel. LifeWay told Fox News Radio that it received authorization to use the official U.S. Military trademarks in 2003. However, it received notice last year that the authorization was being withdrawn. After selling existing copies, B&H replaced the official insignias with generic ones which it claims continue to sell well.

End of U.S. Rum Trademark War With Cuba Seems Near

June 8, 2012,

whiskey-in-glasses.jpgCalifornia - The fight between U.S. and Cuba over use of the trademarked Havana Club name in the U.S. appears to be nearing an end. Although it is currently distributed in over 120 countries, Havana Club rum was never distributed in the Unites States, because Cuba refused to allow the brand name to be sold or licensed within the borders of its bitter rival.

The trademark "Havana Club" came up for renewal with the United States Patent and Trademark Office in 2006, but Cuba has since been unable to renew the trademark. Cuba claims that the U.S. Treasury Department Office of Foreign Assets Control, which enforces the embargo, has not issued the license allowing Cuba to make the $200 renewal payment. Cuba subsequently sued the U.S. government over the issue and lost. The decision against Cuba was handed down on May 14th, beginning the 30-day countdown for the period in which the USPTO can cancel registration of the trademark. Under the 30-day timeline, the Havana Club trademark could expire and be available for new registration in the U.S. as early as June 13th, 2012.

Bacardi, the well-known distributor of rum, currently bottles a rum product that it calls Havana Club Rum. The limited quantity rum product has been distributed in Florida only, but Bacardi has announced plans to expand its sales into other states. However, Cuba considers the use of its brand name in the United States unauthorized, and accuses the U.S. of underhanded maneuvers. If its trademark is allowed to expire in the United States, Cuba promises retaliation against U.S. trademarks currently protected on the island. However, since most U.S. goods are barred from being sold in Cuba under the 50-year embargo, these threats seem hollow. This is not to say that Cuba's threats are all bark and no bite. Even with the current embargo limitations, owners of many popular trademarked food items could still face costly litigation to win back trademarked rights once the embargo is lifted.

Despite its recent loss and struggles over the use of the Havana Club name in the U.S., Cuba vows to continue fighting for its brand name. Proactive steps have been taken to allow the Havana Club rum formula to be sold under an alternate brand name that has already been registered with the USPTO. The French company who handles distribution has plans to distribute the Havana Club formula under the alternate name Havanista once the U.S. Embargo has been lifted.

Havana Club rum is one of the best selling rums in Cuba, and Cuba is confident the product could do well in the United States as well. Its Havana Club rum formula is exceptionally light and dry, primary because of charcoal filtering and an oak-barrel aging process, which allows for extra sweetness. The Cuban rum company also offers various other rums, ranging in price from a couple of dollars per bottle, to a high-end product that sells for over $1200 dollars a bottle.

RIM Wins in BBM Trademark Infringement Case

June 1, 2012,

cellphone_blackberry.jpgCalifornia - Research in Motion (RIM), the creators of Blackberry, won a hard fought victory in court today over use of the BBM trademark.

BBM, or Blackberry Messenger, is an instant messaging application that is sold pre-installed with the Blackberry smart phone. Despite the well-known name and nature of the application here in the United States, the use of the trademark BBM was recently challenged by Canadian television giant BBM Canada. BBM Canada filed a trademark infringement lawsuit with the Canadian federal courts over the use by RIM of its long-used and trademarked name BBM. A cease-and-desist letter had been sent to RIM in 2010, but the letter failed to illicit the response that BBM Canada had anticipated.

In the current trademark case, the court determined that although the trademarked term BBM was owned by the Canadian television company, the two combatants operated in two different industries. And although BBM Canada had long standing ownership of the mark for over fifty years, RIM had not infringed on this ownership because of the fact that they used the trademark BBM in a distinctly different industry. Therefore, confusion among consumers was held to be unlikely.

The news of the win its current infringement case comes on the heels of an earlier trademark infringement case involving RIM and its Blackberry products. In the earlier case, RIM was forced to make changes to its soon to be released Blackberry 10 BBX Operating System. Basis International, the owner of the confusingly similar trademark BBX, sued RIM in Albuquerque, NM federal court to prevent the use of its trademark in RIM's new product release. Blackberry was subsequently forced to make last minute changes to its operating systems and product release materials prior to its Blackberry 10 product launch.

This latest win against BBM Canada could not come at a better time for the beleaguered smart phone manufacturer. RIM has suffered an extremely difficult year with downturns in sales and layoffs resulting from product problems, including global outages and customer dissatisfaction. The latest round of Blackberry outages resulted in a class-action lawsuit against the manufacturer and is not likely to be resolved any time soon.