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ShareTV Wins Transfer of Domain Name in Trademark Lawsuit

December 19, 2013,

tv_remote_control.jpgCalifornia - San-Diego based ShareTV has landed a huge victory with a federal court judge awarding the company the rights to use the sharetv.com domain name. The lawsuit, which was filed in April in the Eastern District of Virginia, cited a volume of claims, including state and federal trademark infringement. The allegations were all made against the same individual, Sooyong Kim of Korea, for his operation of the ShareTV.com website, which was used as a parked page that featured almost entirely sponsored links and ads.

ShareTV has gained widespread popularity in a short amount of time as one stop (online) shop for TV content. The site contains information about actors, characters and plots, includes past and upcoming episode information and lets users comment and review shows. Through its distribution agreement with streaming TV kingpin Hulu, it also provides access to full length episodes of hundreds of TV shows.

Court documents reveal that Kim registered the SmartTV.com domain in 2004, years before ShareTV was formed in 2007 out of founder Chris Richmond's bedroom. However, the complaint details how Kim deliberately augmented to his website to make it more like the one operated by ShareTV, SmartTV.org. It claims that Kim went so far as to display a large ShareTV logo during the time when ShareTV was negotiating to buy the domain name from Kim. ShareTV alleges that negotiations fell through when Kim demanded an enormous amount of money for the domain, which was significantly higher than market value, and continued to disregard demands to take down the confusing elements of his site.

In his ruling, the judge gave heavy weight to Kim's purposeful actions and placed less emphasis on the fact that Kim had registered the domain first, finding that Kim's "actions were done with the deliberate intent to deceive potential and actual users/consumers to [ShareTV's] website." He held that a parked page could serve as the basis for a trademark infringement claim, even if the page was registered before the alleged infringed mark was used. As a result, the judge concluded that ShareTV is the rightful over of the .com domain and that it could begin use of the domain immediately.

Clearly pleased by the outcome of the dispute, Richmond responded by saying, "We hope that our case will set a precedent and pave the way for future startups. The fact that we were able to prove trademark infringement against a domain registered four years before we began business is huge, and we hope it encourages companies faced with a similar situation to take action."

BOTOX Exes Out BOTULEX in Trademark Opposition

November 13, 2013,

medical_instruments.jpgCalifornia - BOTOX has secured its spot as the reigning champion of wrinkle prevention as it successfully prevented registration of BOTULEX in the United States. The Trademark Trial and Appeal Board (TTAB) found that if allowed to register, BOTULEX branded products might confuse BOTOX buyers into thinking that the two brands are the same or that they are associated. In its ruling, the Board found the BOTOX Trademark to be famous, which significantly helped its case.

KRL Group, Inc. , the maker of BOTULEX, filed its trademark application back in 2005 in connection with "non-medicated skin care preparations for topical application to the skin." Its products, which are marketed to customers as "Injection-Free Alternatives" to BOTOX have been popular because of their less invasive "no needles involved" nature. BOTOX, on the other hand, is an injectable prescription drug, which is registered for "Pharmaceutical preparations." By filing its opposition against BOTULEX, Allergan, Inc., which manufactures BOTOX, was able to slow up the application process for years, finally emerging as the victor only this past month.

In arguing against the opposition, trademark lawyers for BOTULEX pointed out the differences between the goods at issue, noting that BOTULEX includes a line of skin care products including creams, toners and serums that do not require a doctor's prescription. Despite the effort, the Board found the fact that buyers must have a prescription for BOTOX to be of "little consequence," especially when BOTULEX is purposefully marketed as a direct competitor of BOTOX. Further, in comparing the impressions of the two trademarks, the Board found that beyond the look of the words being similar, the sounds of BOTOX and BOTULEX are alike. The Board thus concluded that there were similar commercial impressions between the two products and sustained the opposition.

Since it first began being used for cosmetic purposes in 2002, the popularity of BOTOX as a "filler" for fine lines and wrinkles has soared. Estimates predict that the global BOTOX market will be worth $2.9 billion by 2018, with the United States being the biggest contributor. As the only producers of the drug in the U.S., Allergan has fiercely protected the brand for years, this most recent win only adding to its dominance over the facial aesthetic market.

NFL Star Revis Finally Gets Trademark for "Revis Island"

October 21, 2013,

football.jpgCalifornia - Tampa Bay Buccaneer cornerback Darrelle Revis was granted trademark protection over the phrase "Revis Island" last month, according to documents filed with the United States Patent and Trademark Office (USPTO). Revis originally filed the application for "t-shirts, sweatshirts, sweatpants, hats, footwear, sleepwear, swimwear" in January 2010. The application process was long and attenuated, as Revis went back and forth with the USPTO filing four extensions of time to file a Statement of Use before finally being granted protection on September 24th.

The former New York Jets player earned the nickname "Revis Island" during his time in New York, where he became known for his ability to shut out opponents, isolating them and rendering them unable to catch a pass. His one-on-one coverage of some of the best receivers in the NFL has prompted countless comments that they have taken a "trip to Revis Island." This impressive play earned him the Jets franchise record for most career passes defended. He has also been selected to play in the Pro-Bowl four times.

Now that the "Revis Island" trademark has registered, Revis is free to expand upon his success by selling merchandise under the name he worked (and played) hard to create. Indeed, this appears to be just another step in Revis' building of his brand as he already has a Nike shoe named after him, the Zoom Revis, which sells for $130 a pair. While there is no official word on what exactly he plans to sell under the new brand, Revis' broad fan base surely provides a ready market for "Revis Island" apparel and merchandise.

Revis' registration marks one in a long chain of famous athletes and celebrities seeking trademark protection over their coined nicknames and phrases. Among a growing list, the Houston Rockets' Jeremy Lin trademarked "Linsanity," Olympic swimmer Ryan Lochte field for protection for his catchphrase "Jeah" and Chad Johnson filed an application for an "Ochocinco" logo. Beyond athletes, celebrity music couple Jay Z and Beyonce recently made headlines by taking things a step further and filing for trademark protection of their daughter's name "Blue Ivy" the same month that she was born.

Ninth Circuit Reverses Ruling that Jeweler's RED GOLD Trademark is Generic

March 22, 2013,

jewelry.jpgCalifornia - 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.

Cookware Giant Sued for Trademark Infringement over Green Colored Pans

February 27, 2013,

burner-cooking.jpgCalifornia - 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.

Mary Kay, Michael Kors Battle Over MK Trademark

February 14, 2013,

cosmetics.jpgCalifornia - 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.

Anheuser-Busch Wins BUD Trademark Battle in the European Union

January 25, 2013,

beer-bottle-pouring.jpgCalifornia - 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.

Nike's Covenant Not to Sue Bars Trademark Invalidity Counterclaim

January 14, 2013,

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

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

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

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

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

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

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

Former Frontman Fights for VILLAGE PEOPLE Trademark

November 15, 2012,

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

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

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

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

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

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

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

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.

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.

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."

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.