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Pharrell Williams and Will.i.am Call it Quits in Trademark Fight

March 17, 2014,

music.jpgCalifornia - Two of hip hop's biggest names have called a truce in their headline-making legal dispute. Pharrell Williams and Will.i.am recently came to a formal agreement in a trademark infringement conflict. While the exact terms are undisclosed, the settlement ensures that no further legal action will be taken by either party.

The dispute centered over use of the phrase "I Am" and was officially initiated when Will.i.am brought an opposition against Williams for his application to trademark the phrase "I Am Other." The N.E.R.D member fought back, pointing out that his term does not incorporate a period as in Will.i.am and by claiming that the Black Eyed Pea bandmate had no right to exclusively use such a common phrase as "I am."

Williams originally filed his trademark application with the United States Patent and Trademark Office (USPTO) in the summer of 2012. Though he has noted that his "I am Other" brand is meant to encapsulate his "creative venture and way of life", he filed in classes pertaining to music production, apparel and jewelry. Once the application published, Will.i.am. filed a Notice of Opposition with the Trademark Trial and Appeal Board, claiming that consumers were likely to confuse the name with his own moniker as well as his company name, I.Am.Symbolic.

In an interview with Rolling Stone, Williams recently expressed his distaste over the whole issue, terming it "ridiculous" and saying that he was disappointed that Will.i.am had never attempted to resolve the issue with him out of court. After being bombarded with bad press for starting the fight, Will.i.am's lawyers issued a formal statement making it clear that the artist had not sued Pharrell Williams, but that he had simply " done ... what any trademark owner must do to protect and maintain a trademark," in filing an opposition against the registration of William's trademark Application.

The lawyer went on to defend his client's actions by stating, "due to deadlines imposed by the Trademark Office, will.i.am had no choice but to lodge his objection at the time he did." For his part, Will.i.am seemed to agree with his legal team and then turned attention to his more admirable charity ventures, tweeting, "i.am not suing @Pharrell & i never was. what i.am doing is #iamHOME helping families keep their homes... see iamANGELfoundation.org."

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.

The Trademark Fight for "Fab" Between Online Retailers Heads to Court

August 2, 2013,

belt-buckle.jpgCalifornia - Online commerce retailers Fab.com, Inc. and Just Fabulous, Inc. are facing off in federal court over rights to the trademark "Fab."

Just Fabulous filed its complaint against Fab.com on July 24 in U.S. District Court in the Central District of California. While both companies are incorporated in Delaware, Just Fabulous is headquartered in El Segundo, Calif., which is within the boundaries of California's Central Court District.

JustFab.com, operated by Just Fabulous, Inc., holds a family of trademarks containing the words "Fab" and "Fabulous" in relation to apparel. The company began use of "Just Fab" in July 2010.

The company is headed by television personality Kimora Lee Simmons, previously known for her management of Baby Phat, a popular fashion brand. Just Fabulous, which now goes by JustFab, offers a personalized online shopping experience for a membership fee of $39.95 per month.

In 2011, Fab.com introduced its online marketplace of apparel and household goods at discount prices, which requires membership at the site to make purchases. In its complaint, Just Fabulous argued that Fab.com's member-based business model was too similar to JustFab.com's and would lead consumers to a likelihood of confusion.

Fab.com holds multiple trademark registrations for the word "Fab" as an element of its logo design. The company began use of the trademark in interstate commerce in March 2011. It has also applied for a number of trademarks featuring the word "Fab," including "Fab Designed by You" and "Fab, Authenticity, Guaranteed."

JustFab has also filed oppositions against two recently published Fab.com trademark applications for "Fab Deals" and Fab.com's logo, "Fab." The logo features the word "Fab" in a dark box with a heart in the bottom right corner. The oppositions will likely be suspended pending a resolution in the civil case.

In the complaint, JustFab demands a jury trial to argue its claims of trademark infringement as well as unfair competition. The company claims that Fab.com's use of the "Fab" trademark has damaged Just Fabulous' business and diminished its brand. The company is seeking payment for damages and legal costs.

Kraft Wins Preliminary Injunction in "Cracker Barrel" Trademark Dispute

July 8, 2013,

barrel.jpgCalifornia - A judge in Illinois Federal Court on July 1st granted Kraft Food Group, Inc.'s request to bar Cracker Barrel Old Country Store, Inc. from selling its products in grocery stores across the country. Though only a temporary injunction, it is a big win for Kraft as it sets the tone for the case.

The dispute stems from the trademark registrations for "Cracker Barrel", which both companies hold but for different goods and services. Kraft, based in Northfield, Illinois, claims that its first use of "Cracker Barrel" in 1948 for cheese supersedes use by Cracker Barrel Old Country Store, which did not begin use of the trademark until 1969.

Cracker Barrel Old Country Store was originally formed as a Southern-themed restaurant and gift shop, with its first restaurant in Lebanon, Tennessee. The company has expanded, opening restaurants nationwide and licensing its name to a Smithfield Foods, Inc. subsidiary to produce a line of meat products for sale in grocery stores. With that expansion, Cracker Barrel Old Country Store has broadened the scope of use for its trademark "Cracker Barrel Old Country Store" from its original use in restaurant and gift store services.

Cracker Barrel Old Country Store argues that the two trademarks are significantly different and would be used on very different products, so as not to cause confusion. While Kraft's trademark for "Cracker Barrel" is in plain lettering, Cracker Barrel Old Country Store features a stylized logo for "Cracker Barrel Old Country Store" featuring a figure known as "Uncle Herschel" leaning against a barrel.

While Kraft and Cracker Barrel Old Country Store have coexisted for decades, Cracker Barrel Old Country Store's expansion into grocery stores pushed Kraft to file a lawsuit in January for trademark infringement. Kraft's objection stems from a belief that a competing Cracker Barrel label in grocery aisles would damage its well-established "Cracker Barrel" trademark for cheese products.

U.S. District Court Judge Robert W. Gettleman agreed with Kraft and barred Cracker Barrel Old Country Store from selling any grocery store products bearing the Cracker Barrel Old Country Store logo while the trademark infringement lawsuit is pending. Judge Gettleman also ordered Kraft to pay a $5 million bond, in case the court ultimately decides that Cracker Barrel Old Country Store should not have been kept out of stores.

Louboutin Sees Red over Trademark Infringement

June 11, 2013,

shoes-redsoles.jpgCalifornia - Upscale footwear designer Christian Louboutin is back in federal court again, defending the well-known trade dress for red-soled shoes. This time, Louboutin claims the infringer is Huntington Beach, California-based brand Charles Jourdan Fashion Footwear LLC, as well as other unnamed companies and individuals.

The lawsuit, brought in New York federal court on June 4, alleges that Charles Jourdan knowingly manufactured and supplied counterfeit versions of Louboutin shoes to retailers in New York. Among those named is DSW, or Designer Shoe Warehouse, a large discount store for shoes and handbags. The complaint alleges that these knockoff shoes were featured for sale on DSW's website and at stores in Manhattan and Brooklyn. The shoes in question bore the red, lacquered outer sole that Louboutin successfully trademarked in 2008.

The complaint was filed by Christian Louboutin personally, as well as his French-based company, Christian Louboutin, S.A.S, and Christian Louboutin LLC, the exclusive American distributor of the luxury shoes. The lawsuit seeks injunctive relief and damages up to $2 million for each trademark infringement.

The luxury heel brand has aggressively defended its red-sole trademark from infringement, with numerous costly cases against its competitors. Defense of the trademark has been contentious for years, most notably in its lawsuit in 2012 against Yves Saint Laurent S.A.S for production of a completely red shoe. The case went all the way to the Second Circuit Court of Appeals, which held that the all-red Yves Saint Laurent shoe did not violate Louboutin's trademark. The judge in the case did ordered the U.S Patent and Trademark Office to narrow the parameters of the trademark to include protection only if the red sole contrasts with the color of the upper part of the shoe.

Louboutin shoes are sold nationwide at luxury retailers and Louboutin boutiques, costing between $495 and $6,395 per pair. The distinctive red sole has helped the company achieve iconic status. Louboutin heels are worn frequently by celebrities on red carpets and were featured prominently on the television show "Sex and the City."

Federal Judge Sides With Apple in IBOOKS Trademark Dispute

May 14, 2013,

touchscreen.jpgCalifornia - 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.

Gunmaker files Trademark Lawsuit Over "Tommy Guns" Vodka

April 10, 2013,

gangster_car.jpgCalifornia - 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.

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.

Sally Beauty Pays $8.5 Million in Trademark Infringement Settlement

December 5, 2012,

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

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

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

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

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

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

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

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

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

Former Frontman Fights for VILLAGE PEOPLE Trademark

November 15, 2012,

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

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

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

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

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

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

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