California Trademark Attorney® Blog

Nike Sued for Trademark Infringement Over "Lottery Pick"

May 17, 2012,

basketball.jpgCalifornia - A term synonymous with the National Basketball Association is at the center of a trademark infringement complaint against Nike. Urban Motive Sportswear has filed a lawsuit against the sportswear giant for allegedly violating its "Lottery Pick" trademark after Nike used it on a Michael Jordan jacket.

In its trademark infringement complaint, filed in a United States district court in Illinois, Urban Motive Sportswear is alleging that Nike outright stole its trademark by using it on a jacket for sale called the Jordan LS Lottery Pick Jacket. The company registered the term "Lottery Pick" with the United States Patent and Trademark Office back in 2006. The company also claims that it has been selling sports apparel, an energy drink, and other merchandise with the trademark for years.

According to Urban Motive Sportswear, Nike's alleged infringement is particularly harmful to its business since it has done most of its marketing in Chicago, the town where Michael Jordan played out most of his NBA career with the Bulls and where it claims confusion has been created among consumers. The company also contends that it provided Jordan's sons with free sportswear.

In official court documents, Urban Motive Sportswear wrote that Nike's infringement on its trademark has "damaged us in a manner that cannot fully be measured or compensated in economic terms and for which there is not adequate remedy at law."

In the NBA, fourteen teams participate in the Draft Lottery, which is weighted so that the team with the worst record will have the best chance to secure a higher draft pick. The term "lottery pick" is a draft pick whose position is determined through the lottery, while the non-playoff teams involved in the process are often called "lottery teams."

Nike, which refused to comment on the pending litigation, is being sued for unspecified monetary damages.

Michael Jordan, otherwise known as "His Airness", was not named as a defendant in the lawsuit. The former player, who was inducted into the Basketball Hall of Fame in 2009, has been credited by many as being the greatest professional basketball player of all time. Having led the Chicago Bulls to six national championships, Jordan has been one of the most effectively marketed athletes and was considered responsible for popularizing the NBA on a global level in the 1980's and 1990's.

Denim Debacle: Vanity Files Against Levi Strauss in Trademark Claim

May 8, 2012,

jeans.jpgCalifornia - A denim retailer based in Fargo, North Dakota is asking a federal judge to settle a trademark infringement dispute it is currently in with Levi Strauss & Company.

According to court documents filed in a Grand Forks U.S. District Court, the dispute began at the beginning of the year when Levi Strauss sent a cease and desist letter to the Fargo-based Vanity, claiming the pocket design on the retailer's jeans was "confusingly similar" to Levi's brand of jeans.

Vanity responded to the letter by filing for declaratory relief against the denim giant stating that the "V" design on the back of its jeans is "visually distinctive" from Levi's jeans and that "Levi Strauss does not have the right to prevent Vanity from using a stylized version of the letter 'V' in connection with its pocket designs." The lesser-known retailer also indicated in its complaint its apprehension of being sued by Levi Strauss and that it hopes to avoid such legal action by settling the trademark infringement claims.

Vanity claims that it has been using the "V" design in its trademark since the mid 1950's.

However, in the cease and desist letter to Vanity, trademark attorneys for Levi Strauss assert that the similarity in the pocket designs "will create a substantial likelihood of customer confusion as to the source of Vanity jeans."

As a result, Vanity is seeking an order from a federal judge declaring that its pocket designs are not confusingly similar to the Levi's brand. Additionally, Vanity is requesting that the judge issue an order precluding Levi Strauss from suing Vanity for trademark infringement.

Levi Strauss is no stranger to protecting its intellectual property. The company, founded in 1853, has reportedly sued more than thirty other retailers for trademark infringement over the past five years. In a more notable case, a judge ruled against Strauss after it claimed Abercrombie & Fitch had allegedly violated its trademarks.

Vanity is a mall-based clothing chain, selling young women's apparel and accessories. By 2009, the company had expanded its distribution through its website,, and had grown to nearly two hundred stores located across the country.

Fiat Registers 4C Trademark with USPTO, Signaling a Return to America

May 1, 2012,

speedometer-fiat.jpgCalifornia - There is a reason to celebrate for Italian sports car Alfa Romeo fanatics in the United States. According to a report posted by Automotive News, Fiat's Alfa Romeo division registered the trademark in the U.S. for its brand of 4C sports cars.

The trademark registration comes after Alfa Romeo's twenty-year absence in the United States. Fiat CEO Sergio Marchionne confirmed in a recent press release that the rear-wheel drive sports coupe will be available to American drivers by the end of 2013. In May of next year, Italy-based Maserati will reportedly begin building the Alfa Romeo 4C in its Modena manufacturing plant, where its flagship Gran Turismo coupe and convertible models are scheduled for production.

The trademark, issued with the United States Patent and Trademark Office April 10th, will cover the 4C car line, as well as Alfa Romeo-related clothing and accessories.

Initially, Fiat said that it will only build about 2,500 of the sports coupes per year. Although its reported asking price will be in the neighborhood of $65,000, the low rate of production could create a high demand for the Italian luxury car. The demand for the car in the Unites States could very well push the price up even higher.

Marchionne stated that Fiat plans to market the 4C as a luxury brand, competing with Germany sports car BMW, the industry leader.

"The return of Alfa in the U.S. is critical for the group as a global player needs to have an upscale brand in a major market as North America," said Jeff Schuster, senior vice president of forecasting for LMC in Troy, Michigan. "This is a real sign Alfa will come back to U.S.," he added.

The 4C will be a rear-wheel drive mid-engine design and will be powered by a 1.7 liter, direct-injected turbo four-cylinder engine used in various cars from the Fiat line, if the assembly model gets the same engine as the concept car. Power for the turbo-charged engine could reach 250 horsepower at time of production, and should produce sub-five-second 0-to-60 mph speed times, putting it in the class of a true sports car.

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

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'.

Oprah Victorious in 'Own Your Power' Trademark Lawsuit

March 20, 2012,

magazines.jpgCalifornia - Oprah Winfrey has emerged victorious in a trademark infringement lawsuit in which the owner of a motivational services company filed against the former talk-show host over the trademarked phrase 'Own Your Power.'

In the trademark infringement complaint, filed last year, Simone Kelly-Brown, a life coach and owner of Own Your Power Communications, insisted that it was her company that created the phrase along with the OYP acronym and the concept that people can "live their best life" if they believe that "anything you want in life is attainable." Kelly-Brown applied for trademark rights to 'Own Your Power' with the United States Patent and Trademark Office back in 2007.

Kelly-Brown's lawsuit had apparently been filed in response to an edition of O, The Oprah Magazine featuring the cover with a photograph of Winfrey and the headline, "Own Your Power." The cover also featured sayings such as "Unlock Your Inner Superstar," "Tap Into Your Strength," and "Focus Your Energy" with the issue running in conjunction with corporate-sponsored events and an episode of Winfrey's talk-show promoting the issue.

Own Your Power Communications, Kelly-Brown's company, has been in business since 1996, providing life coaching, empowering events, a radio show, and a blog to help individuals employ effective strategies to attain their personal and professional goals. Kelly-Brown's lawsuit asserted that Winfrey's use of 'Own Your Power' had violated her trademark rights and confused the origin of her trademark.

In his decision, Judge Paul Crotty ruled that there was no confusion about the source of the phrase and that Winfrey had the right to use descriptive phrases on the cover of her magazine. The judge also determined that the magazine's "O" trademark was identification that the 'Own Your Power' phrase was meant to be a headline, indicating the contents of the October 2010 issue.

The judge also ruled that Winfrey never used the trademark in bad faith, and that no likelihood of confusion was ever intended or created, and that she is not liable for the trademark being infringed by others because there was no direct infringement in the first place.

Neither party was available for comment.

Urban Outfitters Sued for Trademark Infringement by Navajo Nation

March 12, 2012,

indians.jpgCalifornia - The Navajo Nation has filed a lawsuit in the U.S. District Court of New Mexico against Urban Outfitters, accusing the popular clothing company of infringing on its Navajo trademarks. Last fall after receiving a cease and desist letter from Navajo Nation, Urban Outfitters removed its use of "Navajo" and "Navaho" from its website. However, Navajo Nation alleges in its complaint that Urban Outfitters continued to sell over 20 products in its subsidiary clothing stores such as Anthropologie and Free People, who have also been named in the lawsuit.

Navajo Nation claims in the lawsuit that it has had use in commerce under the Navajo trademark since 1943 and has been known as the Navajo tribe since as far back as 1849. Navajo Nation currently owns at least 86 registered trademarks, 10 of which are Navajo related trademarks and include goods such as clothing, blankets, footwear, and jewelry. The Navajo Nation has claimed that Urban Outfitters is using the Navajo trademark for clothing, jewelry, and accessories. However, one product of Urban Outfitters in particular has been said to be "derogatory and scandalous" and that is the "Navajo Flask". This product has been most disturbing to the Navajo Nation because it does not affiliate itself to any products related to alcohol and in fact bans the sale and consumption of alcohol on its reservation which includes land in Arizona, Utah, and New Mexico.

In the lawsuit filed February 28, 2012, the Navajo Nation states, "In this action, the Navajo Nation seeks to protect its famous and distinct Navajo name and trademark, and to ensure that consumers are no longer deceived, confused, or misled in their pursuits to find and acquire authentic and genuine Navajo products." Navajo Nation is also suing Urban Outfitters for violating the Indian Arts and Crafts Act, which is a federal law making it illegal to sell arts and crafts by misleading consumers into believing they are authentic and made by a Native American tribe or person.

The Navajo Nation is seeking that Urban Outfitters completely stop using and selling products related to the Navajo trademarks as well as monetary damages. Urban Outfitters had no comment at this time.

Hermes Loses Trademark Infringement Lawsuit in China

March 2, 2012,

purse.jpgCalifornia - French fashion house Hermes International has recently lost a trademark infringement lawsuit against a Chinese company that registered a similar trademark. A Chinese court has also rejected Hermes' bid to register the Chinese translation of the famous French name.

Since 1997, Hermes has reportedly tried to convince China's trademark board to cancel a trademark held by Dafeng Garment Factory, a menswear company from southern China. That company had trademarked the term "Aimashi," which is the Chinese translation of Hermes. Despite registering the Hermes brand in China in 1977, the company reportedly did not register its brand name in Chinese at the same time. Ruling against Hermes, the Chinese court said that the French company had not provided evidence that the "Aimashi" trademark had been registered by the menswear company illegally or that the trademark was well known among consumers in China.

Roughly translated, the Hermes version of Ai Ma Shi means "officials who love horses," a tribute to the iconic company's equine origins. Dafeng's version of Aimashi, however features a rare Chinese character, which is part of the word agate -a type of crystal- and is often used for translating the names Mary and Emma into Chinese.

Hermes is not the only foreign company to face challenges in defending its trademark in China. Apple Computer recently lost the rights to use the "iPad" trademark in China after losing its trademark infringement battle to Proview Technologies. Earlier this month, former Chicago Bulls point guard Michael Jordan filed a trademark infringement complaint with a Chinese sportswear company for using a trademark that is the Chinese translation of his name. Although Jordan has never registered the Chinese translation of his moniker in China, Chinese law prohibits companies from freely using the names of celebrities, even if those people have not registered trademarks for their famous names.

Established in Paris in 1837, Hermes specializes in fine leather goods and handbags, lifestyle accessories, perfume, luxury goods, and ready to wear apparel. Known around the world among high fashion brand-conscious consumers, the rejected bid to register its name in Chinese will not likely affect Hermes' popularity or brand recognition among fashionistas in China.

Warner Bros. Sues Disney Over Wizard Of Oz Trademark Infringement

February 21, 2012,

disney.jpgCalifornia - It seems as though the Great and Powerful Oz has spoken once again. This time however, he is not making demands of Dorothy and her friends, but of major companies looking to cash in on its valuable trademarks protecting the 1939 classic, "The Wizard of Oz." Currently, Warner Brothers is embroiled in a trademark infringement lawsuit with Disney over the studio's upcoming film, "Oz: The Great and Powerful."

Over the past year, Warner Brothers has gone after a number of entities attempting to cash in on the timeless Oz characters. In October, Warner Brothers filed a trademark application for "The Great and Powerful Oz," one week after Disney filed a registration of its own. The United States Patent and Trademark Office (USPTO) suspended Warner Brothers' application on the grounds that Disney filed first. The studio has also been filing oppositions with the USPTO's Trademark Trial and Appeal Board over merchandising rights and other uses of the "Oz" trademarks.

Complicating things even more is the fact that the 1899 book written by L. Frank Baum, which the famous film is based on, is currently in the public domain. As one of the opposing party's trademark attorneys pointed out, the intellectual property at issue is taken directly from the book which is in the public domain and no longer protected by copyright laws.

Warner Brothers is standing its ground, maintaining that statements over its recent litigious activities are "akin to saying that anyone should be entitled to use the famous, widely licensed trademarks such as 'Harry Potter' or 'Roadrunner' merely because they were able to find those trademarks in a book."

The current list of companies that Warner Brothers is suing for trademark infringement include Disney, over "Oz: The Great and Powerful," Wicked 'Wiches Wickedly Delicious Sandwiches, operated as a California restaurant, various Halloween costume-makers using the "Wizard of Oz" brand, wine brands including, "Dorothy of Kansas and Toto Wine," "Ruby Slippers Wine," "Broomstick Wine," "The Lion's Courage," and "Flying Monkey Wine," and a publisher of a neuroscience book titled, "If I Only Had a Brain."

Just like Dorothy and Toto in the Wicked Witch's evil castle, Warner Brothers is running out of time to protect its Oz-related intellectual property. Disney's "Oz: The Great and Powerful" is scheduled to hit theaters March 8, 2013.

Apple Trademarks "Macroscalar", Possible New Processing Technology in the Works

February 10, 2012,

apple-logo-gray.jpgCalifornia - Cupertino, California based Apple Computer has filed to register for the trademark "macroscalar," its name for various patented methods for efficiently executing code on a processor, which strongly suggests the company's plans to begin commercially promoting its differentiating technology. The trademark application was filed for the classes including scientific, nautical, surveying, cinematographic, optical, weighing, measuring, and signaling, among others.

Apple reportedly has already registered the trademark in other countries, including Trinidad and Tobago, which are meccas for scuba-diving enthusiasts, possibly being related to the nautical class the trademark was registered for. With the trademark filed with the appropriate legal procedures in those countries, Apple has now moved to register the trademark in other major markets, including the United States.

One of the major markets Apple is seeking to register the "macroscalar" trademark is Hong Kong. This move leads many technology analysts to believe that Apple may be hinting at a forthcoming announcement at one or more new processing technologies.

"The macroscalar processor addresses this problem in a new way: at compile-time it generates contingent secondary instructions so when a data-dependent loop completes, the next set of instructions are ready to execute," as one technology expert noted. "In effect, it loads another pipeline for, say, completing a loop, so the pipeline remains full whether the loop continues or completes," added the analyst.

The trademark itself would cover a technology that has some remote similarities to Intel's Hyperthreading in finding ways to keep a processor running closer to its potential. As Apple has to rely on using off-the-shelf Intel processors in its Mac computers, if the macroscalar design is used, it would most likely apply to iOS devices. From a user perspective, this potential technology could support an environment for faster performance and lower power consumption, something Apple would definitely have interest in for its mobile devices.

Apple has not released any official statement regarding its motivations for registering the trademark for "macroscalar." However, its efforts in Hong Kong as well as the classes applied for have many in the technology world abuzz with anticipation.

Trademark Infringement Lawsuit in Europe Will Offer Google Adword Protection

January 24, 2012,

google.jpgCalifornia - A trademark infringement lawsuit recently tried in Europe is set to give trademarked companies more protection against competitors bidding on their names on Google AdWords.

The lawsuit was filed in UK courts by Interflora, an online flower delivery service, and alleges that rival floral business Marks & Spencer infringed on its trademark by sponsoring Google AdWords with the Interflora name. Its argument of trademark infringement was supported when Interflora was able to prove that Marks & Spencer was bidding on its name and gaining an unfair advantage as a result.

The most notorious example in recent history of firms seeking a competitive advantage at the expense of a rival was when Lowcostholidays ran advertising on Thomas Cook's name as the travel giant's financial trouble became public knowledge. Lowcostholidays is accused of using the controversial search phrase 'been Thomas Crooked?' in its search engine advertising in order to bid against adwords 'Thomas Cook' and 'Thomas Cook Holidays.'

By request, search engines send companies a Third Party Authorization Form to prevent competitors from bidding on their names. However Google is said to not widely support this service. As for the Interflora issue, the case concerned "double-identity" which was use by Marks & Spencer of an identical sign (Interflora) in relation to identical services, namely flower-delivery services. In its judgment on the case, the Court of Justice of the European Union has clarified the circumstances in which a sponsored link advertiser will be liable for trademark infringement when they use a keyword that has been registered as a trademark by a third party. In the U.S. Google has generally allowed parties to bid on a trademarked word, however, the resulting ad cannot use the trademark of another company in the actual text.

The Court reiterated the need for balance between the protection offered to registered trademarks and fair competition in the sector for the goods and services for which the trademarks are registered.

Electronic Arts Cites First Amendment Protection for Video Games in Trademark Infringement Dispute

January 16, 2012,

game-controller.jpgCalifornia - Electronic Arts, Inc., a leading American developer, marketer, publisher, and distributor of video games, is asking a federal judge to grant that it has a First Amendment right to depict real-life military helicopters in video games without the authorization of the aircraft's manufacturer. The plea stems from a trademark infringement dispute that erupted between Electronic Arts and Textron, the parent company of Bell Helicopter, after talks over use of the trademark broke down.

The lawsuit, filed Friday by the video game company in Northern California federal court, was a pre-emptive legal action against Textron. The complaint states that on December 21, attorneys for Textron demanded that Electronic Arts immediately stop its depiction of three Bell Helicopter craft in its 'Battlefield 3' video game.

Statements from the Electronic Arts lawsuit said, "The parties have been unable to resolve their dispute. Electronic Arts therefore has a reasonable and strong apprehension that it will soon face a trademark and/or trade dress action from Textron.

In its preemptive complaint, Electronic Arts maintains that its depiction of the three aircraft "are protected by the First Amendment and the doctrine of nominative fair use." The lawsuit also states that packaging for the Battlefield 3 video game features a disclaimer stating that the appearance of real-world weapons and vehicles does not represent any official endorsement by the manufacturer (Textron). The complaint also states that the Bell-manufactured aircraft are not highlighted or featured exclusively over any other vehicles or aircraft within the video game.

"The Bell-manufactured helicopters depicted in Battlefield 3 are just a few of countless creative visual, audio, plot and programming elements that make up Electronic Arts' impressive work, a first-person military combat simulation," says the lawsuit.

The preemptive action might seem unusual had it not been for June's landmark Supreme Court ruling that gives video games the same free speech protections as other expressive works like music, movies, and books. A preemptive lawsuit, also known as a declaratory relief action, occurs when a party initiates a lawsuit because it fears being sued. The purpose of this legal action is to decide rights so that a party can operate its business with certainty with regard to possible legal issues.

After the June Supreme Court ruling, Electronic Arts was victorious in a similar trademark dispute involving the unlicensed use of likenesses when a federal judge ruled that the video gamer's identifiable depiction of a real college quarterback, without his permission, was within its First Amendment rights to free expression.

WIPO Upholds Domain Name Over California Milk Processor's Complaint

January 9, 2012,

domain-name-http- www.jpgCalifornia - An Administrative Panel (the "Panel") for the World Intellectual Property Organization ("WIPO") ruled that the California Milk Processor Board's ("Milk Board") domain name "" was not infringed by the domain name ""owned by Ryan Leonard. The Milk Board implemented the famous "Got Milk?" phrase in the 1990s as an advertising campaign to get consumers to drink more milk. The widely successful campaign has now become a cultural tagline with as many as 1500 advertisement-related items for sale on Ebay. The derived domain name "" receives over 1.8 million hits a year. Leonard registered the "" in 2009 but the website remained a parked website that only provided pay-per-click ads to third party websites unrelated to milk. Leonard made an offer to sell the website to the Milk Board for $10,000 but the two sides were unable to come to an agreement.

To cancel or transfer a domain name, the Uniform Domain Name Dispute Policy ("UDRP") requires a complainant to prove all three elements: the domain name registered is identical or confusingly similar to a trademark of the complainant's; the respondent has no rights or legitimate interests in the domain name; and the domain name has been registered in bad faith.

The Panel ruled that Leonard's domain name was confusingly similar to the Milk Board's domain name because Leonard's domain nameincorporated the "Got Milk" trademark in its entirely in his domain name. The Panel found that the use of "ads" as an addition or descriptive word in the domain name did not diminish this effect. The common test for "confusingly similar" compares the appearance, sound, meaning, and overall appearance between the trademark and the disputed domain name.

The Panel also ruled that Leonard had no rights or legitimate interests in his domain name. Leonard submitted a sworn statement that his intention was to use the website to sell "Got Milk?" advertisements. However, the Panel was unpersuaded because of Leonard's "passive holding" of the website for more than two years. Because the Panel found that Leonard's domain name was confusingly similar to the Milk Board's, they ruled that Leonard had more of a duty to establish a right or legitimate interest in "" rather than allow the website to remain unused for more than two years.

However, the Panel did rule that Leonard did not register his domain name in bad faith to exploit or profit from the Milk Board's trademark rights. The Panel found that Leonard was not a professional domain squatter and the use of his website was plausible since several advertisements of the "Got Milk?" tagline are sold and re-sold on online auction sites such as Ebay. The Panel concluded from previous cases that a finding of bad faith based on a passive holding of a website depends on the particular facts of a specific case. The Panel was unpersuaded that neither the pay-per-click revenue from Leonard's website nor his offer to sell his website to the Milk Board amounted to a bad faith attempt to exploit or profit money from the Milk Board's trademark.

RIM Seeks Dismissal Of Trademark Lawsuit For "BBM" Acronym

January 5, 2012,

cell-phone2.jpgCalifornia - Research in Motion, LTD ("RIM"), the Canadian telecommunications giant who produces the BlackBerry smartphone, filed a motion for dismissal of a trademark lawsuit against the company related to its use of the acronym "BBM." The suit filed earlier this month by BBM Canada, a Toronto-based radio and broadcasting company, alleges that the "BBM" name used by RIM causes confusion with its clients and employees.

BBM Canada was founded in 1944 and changed its name to BBM in the 1960s before settling on BBM Canada in the early 1990s. BBM Canada provides data and audience measurement analysis for radio and television broadcasting across Canada. BBM Canada currently employs 650 people with $50 million in annual financial revenue as opposed to RIM who employs 17,000 people and had $5 billion in revenue last quarter. BBM Canada's Chief Executive Officer, Jim Macleod, argues that small size of his company should not be a factor, "I'm sure to a really big company this looks like relatively small numbers, but to us it's a big deal."

Another issue is the global reach of Blackberry Messenger that has defined the acronym "BBM" in Canada and abroad. RIM boasts 50 million users worldwide of their BlackBerry smartphones and messenger service. MacLeod understands his company's limitations, "We have to be practical, they operate worldwide, we don't. But we're not prepared to just walk from our name." MacLeod argues that within Canada, he is often mistaken for a RIM executive and BBM Canada call operators receive up to 250,000 calls a year from Canadians who similarly mistake BBM Canada for RIM.

In a statement by RIM, they contend that they should be allowed to use the "BBM" acronym because "the two companies [RIM and BBM Canada] are in different industries and have never been competitors in any area." RIM also argues that under Canadian trademark law, two trademarks are eligible to co-exist if the services do not overlap. It's one of debate how separate and divergent the industries are for RIM and BBM Canada.

The Canadian Intellectual Property Office (CIPO) also weighed on this suit by filing a letter to the court stating the "BBM" trademark does not appear to be registrable after it denied RIM's trademark application for "BBM" in 2009. RIM maintains that its trademark application is still pending and that any "inference by BBM Canada that CIPO has refused RIM's BBM trademark application is quite frankly very misleading." McLeod disagrees with RIM's assessment of its trademark application with CIPO arguing that while RIM filed an extension of its trademark application in 2009, they have not pursued the matter any further.