California Trademark Attorney - California Trademark Lawyer

California - New York U.S. District Court Judge Denise Cote recently ruled in Apple's favor in a lawsuit initiated by a New York publishing company which alleged that Apple's use of the "iBooks" trademark was an infringement.

J.T. Colby & Co. Inc. filed the complaint in 2011 alleging prior use of the "ibooks" trademark, false designation of origin, wrongful misappropriation, unjust enrichment and conversion. J.T. Colby & Co. sought a permanent injunction barring Apple's use of iBooks.

In December, Apple filed a Motion for Summary Judgment to have the case thrown out. Judge Cote granted Apple's motion stating that J.T. Colby had no evidence to support either that its use of IBOOKS was entitled to trademark protection or that consumers were likely to be confused between Apple's use and J.T. Colby's use. The judge held that J.T. Colby's use of "ibooks" was merely descriptive and rejected the assertion that anyone would somehow confuse Apple's iBooks with J.T. Colby's ibooks.

J.T. Colby began using ibooks and ipicturebooks as a result of its 2007 acquisition of assets from Byron Preiss, another New York publishing company. J.T. Colby claimed in the complaint that Byron Preiss had originally been using ibooks since as early as 1999 in the publishing of thousands of books made available on the Internet.

In 2010, Apple became interested in the iBooks name for its new downloadable software program which allows the purchase, storage and reading of books on iPhones, iPods and iPads. At the time Family Systems Ltd. owned the IBOOK trademark, Reg. No. 2,446,634 for "computer software used to support and create interactive, user-modifiable electronic books." Apple then cut a deal with Family Systems, who ultimately assigned the trademark to Apple in February of 2010.

Apple did not comment on the recent decision handed down by Judge Cote.

California - Washington Redskins QB Robert Griffin III burst onto the NFL scene last season as a rookie. With his RGIII nickname gaining popularity he chose to try to protect it by filing an RGIII U.S. trademark application. The application is for "shirts, sweatshirts, jackets, pants, shorts, footwear, hats, caps, athletic uniforms".

When the RGIII Trademark Application published for opposition on December 25, 2012, Research Group 3, or "RG3," an Anaheim, California maker of suspension parts for motorcycles filed a request for extension to oppose it. Research Group 3 is considering initiating an action with the U.S. Patent & Trademark Office to try to bar the QB from using his nickname as a trademark. Research Group 3 feels the public may be confused into thinking that the RGIII trademark is somehow associated with RG3.

Rather than battle it out in court, it appears that the sides are attempting and enter into a consent agreement whereby both parties can use their respective trademarks in a way that avoids confusion. This would involve making a clear delineation between the use of RGIII and RG3. Research Group 3 has stated that it is not trying to profit from QB's fame and wishes him the best on and off the field. What it hopes to accomplish is to avoid consumer confusion in the marketplace.

Research Group 3 claims that it has evidence of actual confusion in that it has received inquires as to whether the Redskin's QB is associated with the company. Research Group 3 has the option of filing a Notice of Opposition which would initiate a proceeding with the Trademark Trial and Appeal Board. The TTAB would then decide the fate of Robert Griffin III's trademark. If it is determined that a likelihood of confusion exists and that Research Group 3 has prior use, the TTAB could decide to prevent the RGIII trademark's registration.

With the increasing fame of the QB and his RGIII nickname, it is understandable that Research Group 3 would want to protect its trademark from any misperception. The company started making off-road motorcycle suspension parts in 1998 and hopes to "bring the art and science of off-road motorcycle suspension to a whole new level."

Research Group 3's popularity grew as it created the technology to aid professional and amateur riders to maneuver motorcycles through challenging terrain. It continues to be endorsed by professional figures in the industry, including Travis Pastrana, Broc Hepler, Rodney Smith, Nick Wey, Brian Deegan and Ronnie Faisst.

California - Last week Saeilo Enterprises Inc., manufacturer of the Tommy Gun machine gun, filed a trademark infringement lawsuit against Alphonse Capone Enterprises Inc. in an attempt to stop the manufacture and sale of a new brand of vodka under the "Tommy Guns" name.

Saeilo Enterprises has been in the business of machining metal parts used in the aerospace, automotive, computer, electronics and medical industries since 1981. In 1994, Saeilo formed its Kahr Arms division. Then in 1999, Kahr Arms bought Auto-Ordnance, the maker of the infamous "Tommy Gun" firearm, and continued the manufacture of the gun.

Saeilo is also the owner of the TOMMY GUN trademark, Registration No. 2,885,628 for firearms. The trademark has been in continuous use since 1920. Saeilo also owns a separate TOMMY GUN trademark covering apparel.

Alphonse Capone Enterprises, which also sells cigars, operates a restaurant and bar which purports to be an old hideout frequented by Al Capone in the late 1920's.

Saeilo is trying to shut down Alphonse Capone's vodka operation and has filed a complaint in New York Federal Court. The complaint cites 10 causes of action against Alphonse, including trademark infringement, trademark dilution, false designation of origin, trade dress infringement, deceptive trade practices, and unfair competition. Saeilo is alleging irreparable harm caused by Alphonse Capone Enterprises and is seeking a permanent injunction and an award of damages and attorney's fees.

The accusation of trade dress infringement stems from the fact that the Tommy Guns vodka bottle is an exact replica of the famous machine gun.

Beyond a permanent injunction, Saeilo is seeking an order forcing Alphonse Capone to turn over all bottles in its possession to Saeilo for destruction. It is not clear whether the vodka has been made available for sale as of yet, but information about the vodka can be found on the Tommy Guns Vodka website.

In 2011, Saeilo waged a similar lawsuit against Buzz Bee Toys, Inc. of Mt. Laurel, New Jersey who was selling a toy gun similar to the popular submachine gun which used the name "Tommy" on its packaging. The case likely ended in a settlement.

California - The Ninth Circuit reversed the lower court's ruling that dismissed a lawsuit brought by jewelry designer Solid 21, Inc. alleging that its rival Breitling USA, Inc. infringed it RED GOLD trademark, saying the lower court erred when it ruled that the trademark was generic and therefore not protectable.

The Ninth Circuit reversed U.S. District Judge Gary A. Feess' ruling that dismissed Solid 21's lawsuit for failure to state a claim and remanded the case to the California district court, saying that the evidence provided by Solid 21 gave it the presumption that the trademark is not generic.

"Solid 21 has alleged in its complaint and submitted supporting documentation indicating that its "red gold" mark is registered in accordance with the Lanham Act," the appeals panel's opinion read. "Solid 21's federal registration of its trademark constitutes prima facie evidence of the trademark's validity."

Solid 21 asked the Ninth Circuit to revive its lawsuit early this month, claiming that Judge Feess of the Central District of California made a rash decision when he ruled that "red gold" is a generic term for the amber-hued alloy made from gold and copper.

Breitling argued that Solid 21 could not protect a term that describes the metals the product is made out of. It also argued that there is not a rule preventing judges from dismissing a trademark infringement case at the motion to dismiss stage on grounds that the term is generic. It also argued that Judge Feess appropriately considered its dictionary evidence that Solid 21's RED GOLD trademark is merely descriptive of a specific kind of gold that has a reddish hue from being alloyed with copper.

Solid 21 argued that a trademark should not be ruled generic at the motion to dismiss stage because it is a factual inquiry. It said that a motion to dismiss would have to be turned into a motion for summary judgment in order for the judge to dismiss the case based on genericness.

The appeals panel cautioned Breitling that it is hard to overthrow the presumption of validity and that it has the burden to prove the trademark is not protectable.

The lawsuit is one of 15 filed by Solid 21 in January of 2011 in an attempt to protect the RED GOLD trademark against brands including Bulgari, LVMH Moet Hennessy Louis Vuitton, Rolex and Swatch. The other lawsuits were on hold awaiting the Ninth Circuit's decision on the case against Breitling.

California - Meyer Manufacturing Co. Ltd. asked a California federal judge of the Eastern District of California to rule that Telebrands Corp. cannot trademark pots and pans with a green cooking surface.

Telebrands, the original "As Seen On TV" company, produces the Orgreenic product line of pots and pans that have the insides painted green to symbolize that the products are environmentally friendly. Telebrands accused Meyer's EarthPan line of pots and pans of infringing its trademark for "the color green on the inside surface of a cooking pot or pan."

The Hong Kong-based cookware giant Meyer told Judge Lawrence K. Karlton in its Motion for Summary Judgment that Telebrands' supplemental trademark should never have been granted because the green color used on the interior of the pots and pans is a functional indicator that the products are eco-friendly and the color has not gained secondary meaning to make it protectable.

"There are no other colors that signal that a product is environmentally friendly or healthy as does the color green. Being 'green' is synonymous with being environmentally friendly, and Telebrands may not monopolize a color that performs such a function," Meyer argued in its motion.

Meyer went on to claim that even if Telebrands' trademark was found to be valid, Telebrands had no proof that there was any consumer confusion between the Orgreenic products and the EarthPan line, which is a necessary element of trademark infringement.

Meyer's motion brought to attention the Second Circuit's ruling against Christian Louboutin SA last September. The appeals court there held that the trademarked red-soled shoes did not prevent competitor Yves Saint Laurent from selling shoes of a similar style in all red.

Though the cases have many differences, Meyer argued that since its pans are entirely green, instead of just the internal cooking surface being green, its products have the same level of resemblance to the Orgreenic products as Yves Saint Laurent's shoes had to Christian Louboutin's shoes.

Meyer initiated the litigation in the Eastern District of California when it filed a lawsuit for a declaratory judgment that the EarthPan line does not infringe Telebrands' trademark. Telebrands then filed a counterclaim accusing Meyer of infringing its trademarked green cookware and accusing the company of intentionally trying to confuse consumers in an attempt to profit from Telebrands' goodwill.

California - Mary Kay Inc. filed a lawsuit against the clothing company Michael Kors LLC claiming the company is promoting competing products with the founder's initials, which breaches an agreement the two companies made to manage the use of similar trademarks.

The cosmetics company alleged that Michael Kors filed applications with the U.S. Patent and Trademark Office in an attempt to register the trademark MK for use on charms to be affixed to Estee Lauder cosmetic gift bags. Mary Kay claims this is in direct violation of the coexistence agreement the two companies struck, which only allows Mary Kay to use the MK trademark on makeup and other cosmetic goods.

Michael Kors first attempted to register an MK trademark in 2003. Mary Kay already owned a variety of MK trademarks and challenged Michael Kors application with the USPTO, according to the complaint.

In order to coexist in the market without any threat of trademark infringement, the two companies struck a deal in 2005 that resolved their differences and limited use of the MK trademark by Michael Kors. One of the terms prevented Michael Kors from using MK to promote any kind of cosmetic products.

Another term of the agreement prohibited Michael Kors from using the MK trademark unless the company's full name was spelled out near the trademarked initials. Mary Kay claims that Michael Kors asked to modify the agreement in 2011 to allow the company to create a circular charm with the MK trademark.

Even though Mary Kay did not agree to Michael Kors' request to use the trademark without the full name of the company, Michael Kors proceeded to apply for the MK charm trademark. Later Mary Kay learned that Michael Kors planned to use the charms on cosmetic bags that would be sold by Estee Lauder in several retail stores, including Macy's and Nordstrom.

"Because these breaches concern the wrongful use of a valuable trademark that Michael Kors contractually agreed not to use in these ways, the damage to Mary Kay from Michael Kors' breach is irreparable, immeasurable and not solely compensable by monetary damages," the complaint said.

Mary Kay is asking the court to force Michael Kors to honor the agreement it made with Mary Kay and withdraw its applications for the MK charm trademark.

California - Anheuser-Busch InBev NV was granted the trademark BUD to use in conjunction with selling beer in Europe by a European Union court on Tuesday.

The two companies began battling over beer trademarks more than a century ago. Both Anheuser-Busch and Budvar began brewing beers using the name Budweiser in the late 19th century. The name comes from Ceske Budejovice, a town in Czechoslovakia, which is called Budweis in German.

After years of trademark battles, the two companies have been granted a mix of trademark rights around the world. Budvar is required to use Czechvar on its beer in the United States and Canada. In Germany, Austria and other EU nations Anheuser-Busch can only use Bud on its beer. In other countries, such as the United Kingdom, both companies can use the Budweiser name.

Budvar has been challenging the EU trademark office's decision to grant the BUD trademark to Anheuser-Busch. It argued that the trademark is protected by designation of origin, as the name is from the Czech city, and that Anhauser-Busch should not be allowed to use it since it does not make its beer in Ceske Budejovice as Budvar does.
The court ruled that Budvar had only used the designation of origin in a few areas of France and Austria and claimed that the low volume of sales in those areas did not justify blocking Anheuser-Busch's registration.

Anheuser-Busch released a statement that said, "We are extremely pleased to have confirmed our right to a Bud trademark registration valid throughout the entire European Union. This ruling is majorly important in that it will expand our already strong global protections for Bud and Budweiser."

Anheuser-Busch got the news just a week after the U.K. Supreme Court rejected to hear the company's case in which it was attempting to secure exclusive rights to the BUDWEISER trademark in the United Kingdom.

The lower court who initially turned down Anheuser-Busch's request said that the two companies have coexisted for so long in the market and both companies have such high volumes of sales that consumers are accustomed to the two existing together and neither company deserves the name more than the other.

The 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.

California - 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.

California - 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.

California - 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.

California -- 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, BagFashionMore.com and BagFashionSpa.com, 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.

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.

California - 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 GoDaddy.com 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.

California - 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.