Posts in Trademark

U.S. District Judge Phyllis Hamilton while there are similarities in the names of the digital application storefronts, Apple has not proved that Amazon has in fact tried to pass itself off as an official Apple app store. In her order to dismiss the claim, Hamilton wrote, “There is no evidence that a consumer who accesses the Amazon Appstore would expect that it would be identical to the Apple App Store, particularly given that the Apple App Store sells apps solely for Apple devices, while the Amazon Appstore sells apps solely for Android and Kindle devices. Further, the integration of Apple devices has more to do with Apple’s technology than it does with the nature, characteristics, or qualities of the App Store.”

Though the owners of the MLP Online site seemed to be aware of the fact that their game was infringing on the Hasbro trademark, they went ahead and constructed the game anyway. However, they are not upset with Hasbro for issuing the cease and desist. The moderator of the online fan site stated that, “Hasbro is not to be blamed here. As per U.S. Trademark law, as soon as an infringement comes to light, they are obligated to defend the trademark, or they will lose it. They had no choice in the matter, regardless of what they thought of the project or how it benefited them. At this time, our game is no longer in development.”

Crocs, Inc. (NASDAQ: CROX) announced earlier today that Chinese courts have sentenced 18 individuals to a total of more than 46 years in prison for producing and selling counterfeit Crocs goods. Seventeen individuals were convicted of counterfeiting, and two of the 17 also were convicted of offering bribes. Another individual also was convicted on bribery charges in connection with production of counterfeit Crocs™ shoes. In addition to prison sentences, the above men together face fines totaling RMB 2,832,500 (approximately $450,896).

Speck Products has obtained a judgment from a California Federal Court against Tsai & Shaw, a company that has been selling counterfeit Speck iPhone cases. The judgment includes a permanent injunction against Tsai & Shaw, as well as an award for the damages. The case against Tsai & Shaw is just one of the several judgments in the last year that equals over $1.2 million in damages against Tsai & Shaw and other counterfeiters.

The injunction, approved by Judge Rogers means that Diageo Chateau must stop production and sales within Sonoma County, California, which was the geographical limitation put on the injunction by Judge Gonzalez. The issuance of the preliminary injunction is contingent upon the plaintiff filing proof of issuance of a bond in the amount of $500. That is not a mistake, the bond required was only $500.

The white paper outlines just how these counterfeit parts are entering the global supply chains. Even though there are government regulations and precautionary measures taken by the industry, there seems to be a growing problem with counterfeit parts that can cause damage and even fatalities. The introduction of the whitepaper claims: “The complex and distributed nature of supply chains has created vulnerabilities for companies and organizations. Governments and regulations can only go so far. As such, industry can benefit from taking a more proactive approach to protecting the supply chain from counterfeit products and pirated materials.”

Mexico’s Secretary of Economy Bruno Ferrari deposited his country’s instrument of accession to the Madrid Protocol for the International Registration of Marks with WIPO Director General Francis Gurry on November 19, 2012, bringing the total number of members of the international trademark system to 89. The treaty will enter into force with respect to Mexico on February 19, 2013. The Madrid System for the International Registration of Marks (Madrid system) offers trademark owners a cost effective, user friendly and streamlined means of protecting and managing their trademark portfolio internationally.

The technology that involves cooling fact cells to reduce the amount of body fat is the center of a new trademark complaint. Zeltiq Aesthetics, Inc has filed a claim against Dr. Marco Hallerbach, MD, and Dr. Hallerbach & Associates, Inc. claiming that they are not only unlawfully using a procedure they own, but that in so doing they are infringing various trademarks owned by the company. The complaint was filed in the United States Federal District Court for the Middle District of Florida, Tampa Division on October 9, 2012. Zeltiq also filed a Motion for Preliminary Injunction simultaneous with the filing of the complaint, which requests an injunction to stop Dr. Hallerbach’s advertising and to prevent him from using any of Zeltiq’s trademarked products.

A well-known sandwich and a little punctuation mark are at the heart of a lawsuit between a Philadelphia restaurant and the United States Patent and Trademark Office. Campo’s Deli in Philadelphia, is suing the director of the Patent and Trademark Office, David Kappos, in response the USPTO’s rejection of their application, which sought to trademark the name “Philadelphia’s Cheesesteak.” The problem? There are already registrations for nearly identical marks — just without the apostrophe.

In 1879 the United States Supreme Court first had the opportunity (and necessity) to address whether Congress had been granted in the Constitution the power to enact legislation to protect trademarks. Since 1879 there have been many cases involved trademark issues that have wound up the top Court in the United States. But a summary start to finish of all Supreme Court trademark cases is even a bit ambitious for us in a single article. Thus, what follows is a summary of those trademarks issues that have reached the Supreme Court over the last generation.

Unlike patents and copyrights, a trademark can exist in perpetuity so long as it is being used. And a mark has to be used to stay alive. But sometimes, and for a variety of reasons, a company will stop using a mark. This is known as “abandoning” it. A trademark can be abandoned while the application is still pending or it can be abandoned later after it has been in use for some time. Abandonment can happen for a few reasons, for example, failure to respond to an Office action or for failure file a required affidavit. But today, we’re talking about abandonment for non-use. Abandonment can be a tricky concept, but in terms of non-use, a trademark will be abandoned when an owner stops using it with no intention of resuming use of the mark. But abandonment is not necessarily permanent, hence the zombie nickname. A once dead trademark can spring back to life if a few conditions are met.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) is seeking public comment on the possibility of adjusting trademark application fees, so as to lower the fees for all applicants willing to file and communicate electronically with the USPTO. The efficiencies achieved by trademark electronic filing and communications have put the USPTO in a position to potentially reduce the overall collection of trademark application fees, and the Office wishes to adjust the fees in a way that further promotes efficiency both for users and the USPTO. A Notice of Inquiry has been published in the Federal Register.

Counterfeiting is now one of the fastest growing and profitable industries in the world. With an average of 5 – 7% of the world trade market, it is a $600 billion per year industry. The U.S. Customs and Border Protection (CBP) reports the total number of counterfeit goods increased dramatically in FY 2011 by 24% compared to the prior year, and has increased 325% over the past decade. The impact and cost across industries is quite staggering. The Federal Trade Commission reported that counterfeit automotive parts total approximately $12 billion and also result in 200,000 fewer manufacturing jobs. Additionally, electronics industry experts stated a loss of between $100 billion and $200 billion annually. Of particular concern is the pharmaceutical industry, which counterfeit drugs account for $75 billion dollars globally.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the selection of nine additional law schools to join the Trademark Law School Clinic Certification Pilot Program this fall. The program allows law students to practice trademark law before the USPTO under the guidance of a faculty clinic supervisor.

Still, it seems a little reckless to me to select a trademark that incorporates “ARMOR” or “ARMOUR” when entering an industry that has a heavyweight such as Under Armour with a large trademark portfolio and the means to enforce that portfolio. Is the name BODYARMOR so critical to the success of the company and selling their drinks? I doubt it. So then why run the risk of incurring the wrath of a well funded and well known trademark owner? It just doesn’t make business sense if you ask me. That is why I always advise companies to consider doing a rather exhaustive trademark search and obtaining an opinion from an attorney prior to spending money on adverting and marketing campaigns.