Archive for the ‘Infringement’ Category

« Older Entries

L&G Wins Injunction

Friday, November 16th, 2012

Lombard & Geliebter LLP partners, Mathew Lombard and Darren Geliebter, secured a trademark victory for Aventis Pharmaceuticals Inc.

After an opposition proceeding at the U.S. Patent & Trademark Office’s Trademark Trial & Appeal Board (“TTAB”), Aventis Pharmaceuticals filed an appeal with the District Court for the Southern District of New York seeking review of the TTAB’s decision.

When negotiations with the applicant/infringer failed to achieve a settlement, Aventis pursued the action in court.  On September 28, 2012, Judge Engelmayer issued a default judgment in favor of Aventis.   The order finds that Heal the World, Inc.’s applied-for trademarks LAZACOR and LAZACOR+ infringe and dilute Aventis’ NASACORT mark.

Accordingly, the court ordered the U.S. Patent & Trademark Office to refuse registration of LAZACOR and LAZACOR+, enjoined Heal the World from ongoing use of the marks and ordered Heal the World to destroy existing products, labels and advertising and to take down any and all web sites using the LAZACOR marks.

The deadline to appeal has expired, and the court’s order stands.

We congratulate Aventis Pharmaceuticals and its parent company, Sanofi, for a successful action.

Tags: , , , , , , , , ,
Posted in Announcements, Infringement, Litigation, Trademarks | No Comments »

NEXTBOOK: A Client Victory

Friday, April 13th, 2012

On January 12, 2012, our client Cambrige Overseas Development, through its licensee, received a cease and desist letter demanding that it cease all future use of its NEXTBOOK mark for a computer tablet based on the would-be Plaintiff’s ___BOOK mark1, which it uses for digital publications and digital publishing services.

The letter asserted that the would-be Plaintiff had received calls from consumers concerning our client’s product.  The cease and desist letter concluded with:

Although __book is fully prepared to enforce its rights through litigation and to seek monetary damages against you if necessary, it would prefer to resolve this matter amicably so long as you immediately comply with this request. Please be advised that your infringement and dilution of ___book’s mark is in violation of federal and state law and exposes you and your company to substantial liability, including possibly treble damages, attorneys’ fees and costs, injunctive prohibitions, and a Court Order impounding your property.

Our client had been using its mark in the United States since 2009.

(more…)

Posted in Announcements, Branding, Business of TMs, Commentary, Infringement, Trademarks | No Comments »

Apple Sued Over iCloud

Friday, June 10th, 2011

In the same week that Apple announced its plans to launch its iCloud service later this year (as a replacement to its less-than-impressive MobileMe service), Apple has been slapped with a lawsuit.  The lawsuit was filed yesterday in U.S. District Court in Arizona by iCloud Communications, LLC.  The suit alleges:

The goods and services with which Apple intends to use the “iCloud” mark are identical to or closely related to the goods and services that have been offered by iCloud Communications under the iCloud Marks since its formation in 2005. However, due to the worldwide media coverage given to and generated by Apple’s announcement of its “iCloud” services and the ensuing saturation advertising campaign pursued by Apple, the media and the general public have quickly come to associate the mark “iCloud” with Apple, rather than iCloud Communications.

A copy of the complaint may be found here.

Relatedly, German company, Simfy, has filed a lawsuit against Apple, claiming Apple rejected its iPod app (yes, “app” means application) because Simfy is a potential competitor to Apple’s iCloud service.

While Apple certainly markets its i-formative marks and products better than its competitors, Apple has rarely been first to market with many of those i-formative marks.

For example:

  • Cisco owned a 1999 registration for iPhone for “computer hardware and software for providing integrated telephone communication with computerized global information networks” long before Apple filed its first iPhone application in 2006;
  • InPub, LLC filed an application for iPhone in 1999; Apple filed its own in 2001; and
  • Mag-Tek, Inc. owns a 2008 registration (filed in 2000) of iPad for “KEYPADS FOR ENTRY OF PERSONAL IDENTIFICATION NUMBERS IN E-COMMERCE” (Apple first filed for iPad in 2003).

Let’s not forget Apple chose Mighty Mouse as the name for its first wireless mouse despite the fact that Mighty Mouse is a famous and iconic 20th Century Fox character.

Finally, McIntosh Labaratory had been using McIntosh as a trademark for audio, video and stereo equipment since 1978.  Apple’s first application for MacIntosh was not filed until 1984.

In all fairness, Apple does seem to be the first to have used and filed for iTunes.  (Even a broken clock has the right time twice a day.)

Despite Apple’s origins (or at least its original marketing stance) as an anti-establishment company (see its first ad here), Apple has become that which it first advertised against 25 years ago.

We suspect that Apple will ultimately pay iCloud Communications to own (or license) the mark iCloud.  It should nonetheless be an interesting case to follow.

 

 

Posted in Commentary, Infringement, Litigation, News, Technology, Trademarks | No Comments »

Big vs. Little

Wednesday, December 26th, 2007

2005 winner of the television show  "Hell’s Kitchen" is now facing a trademark lawsuit by one of the world’s largest recording labels.

Chef Terry Miller shot to fame on television series Hell’s Kitchen, when he won praise for his signature dish named Rockafella.

The prawn and mash creation then inspired the name of the Newcastle restaurant he opened after winning the competition.

UMG Recordings Inc, which owns the Roc-a-Fella’s record label and whose artists include Elton John, U2 and rapper Kanye West, are objecting to Terry registering Rockafella as a trademark to protect the restaurant’s name.

If a legal battle goes ahead it could result in a hearing in London next year.

You can read the entire story here.

Posted in Branding, Business of TMs, Infringement, International, Litigation | No Comments »

Baby Come Out of the Corner

Thursday, August 23rd, 2007

Lionsgate Studios has filed lawsuits against several companies selling merchandise featuring the phrase “Nobody puts Baby in a corner” from the hit film, “Dirty Dancing”.

The suit, filed August 15 in Los Angeles District Court, claims 15 companies including Uncommongoods.com in New York, Lucky Lou Boutique in Fishers, Ind., and Duck Duck Goose in Troy, Ohio, have used Lionsgate’s registered trademark without permission.

“The American Film Institute voted ‘Nobody puts Baby in a corner’ as one of the top 100 most popular quotes from a motion picture,” the lawsuit states. “Plaintiff markets and sells merchandise with the movie trademarks through approved licensees as part of the ‘Dirty Dancing’ line of approved merchandise.”

The defendants, many of which market baby clothing and merchandise, are not authorized to use the mark and have created a likelihood of confusion with merchandise authorized for sale by Lionsgate, the lawsuit alleges.

Posted in Business of TMs, Infringement, Trademarks | No Comments »

Kentucky Derby v. DerbyBox.com

Friday, May 11th, 2007

derby.jpgSince a consent agreement was entered into in 2003 regarding the use of images of the Kentucky Derby racetrack, Churchill Downs – owner of the KENTUCKY DERBY trademark – sued DerbyBox.com again.

DerbyBox specializes in ticket packages and accommodations for thoroughbred racing events throughout the year, some of which – including the Kentucky Derby – are run by Churchill Downs. The website also contains a disclaimer that it is not affiliated with the track, the race or any other event from its package tours. In promoting its packages, DerbyBox uses trademarks such as KENTUCKY DERBY to describe its travel packages. Churchill Downs objects to this.

The judge would have none of Churchill Downs’ arguments. In his decision, Judge Heyburn wrote, “The Court has no reason to believe that the website has changed significantly in its use of the Marks ‘Kentucky Derby’ and ‘Churchill Downs’ since January 6, 2003. It strains credulity to suggest that between the entry of the Consent Decree and early April 2007, Churchill Downs failed to review www.derbybox.com, especially considering Churchill Downs invested significant resources in the prior lawsuit against Defendants.”

I sometimes do not understand the position of businesses in this regard. DerbyBox is not competing with the Kentucky Derby. In fact, by selling his travel packages to tourists, he is selling tickets to the race. In selling tickets to the race, Churchill Downs is making money. Why would Churchill Downs object to this kind of use? Not only is the defendant selling entrances to the plaintiff’s event, he is also providing free advertising.

I could understand if the defendant were using the KENTUCKY DERBY to draw internet users to its web site and then offering tickets to another, competing event that Churchill Downs would object to this use. But the defendant was selling tickets tothe plaintiff’s own events.

Sometimes, I really think that trademark owners should think through possible infringement claims before moving forward. Unless I’m missing some crucial facts, this seems like an unreasonable course of action.

I’m still looking for the opinion.

Yet another example of trademark overreaching – in that case it involves the OSCAR mark.

Posted in Business of TMs, Descriptiveness, Fair Use, Infringement, Trademarks | 1 Comment »

Pork. The Other White…Milk?

Saturday, February 3rd, 2007

It seems that the National Pork Board takes issue with a breast-feeding advocate’s use of the phrase the other white milk on t-shirts sold to raise awareness of breast-feeding. Of course, the National Pork Board has been using the slogan The Other White Meat for years.

You can read the cease and desist letter here.

Without commenting on the merits of the Pork Board’s claims, there is a truly inexplicable claim in the letter:

In addition, your use of this slogan also tarnishes the good reputation of the National Pork Board’s mark in light of your apparent attempt to promote the use of breastmilk beyond merely for infant consumption, such as with the following slogans on your website in close proximity to the slogan “The Other White Milk.” “Dairy Diva,” “Nursing, Nature’s Own Breast Enhancement,” “Eat at Mom’s, fast-fresh-from the breast,” and “My Milk is the Breast”.

“your apparent attempt to promote the use use of breastmilk beyond merely for infant consumption”…. Is the Pork Board serious? Even a quick 5-minute review of http://www.thelactivist.com reveals that the owner is simply promoting infant breast-feeding.

If you’re going to send a cease and desist letter – particularly one which has arguably valid legal foundations – don’t embarass yourself with silly claims like this.

Posted in Business of TMs, Dilution, Government Action, Infringement, Trademarks | 1 Comment »

Google v. Stoller

Tuesday, January 30th, 2007

Apparently Google has had enough of Leo Stoller‘s shenanigans.  It’s suing him. The complaint is available here. 

On January 19, 2007, Google, Inc. commenced a civil action in the U.S. District Court for the Northern District of Illinois against several of Leo Stoller’s companies, seeking injunctive relief, damages, attorney’s fees, and costs, arising out of the “fraudulent scheme” of Defendants and “their alleged principal, Leo Stoller.” According to the Complaint, the scheme involves “falsely claiming trademark rights for the purpose of harassing and attempting to extort money out of legitimate commercial actors, both large and small.

The 25-page Complaint, accompanied by nearly 200 pages of exhibits, charges the Defendants with violation of the Racketeer Influenced and Corrupt Organizations Act (RICO), 18 U.S. C. Sec. 1961 et. seq., of Section 43(a) of the Lanham Act, and of the law of unfair competition.

Stoller’s response is here.

While the complaint is, in my opinion, fairly boiler-plate, I highly recommend the exhibits attached to the complaint – in paticular the July 14, 2006 letter from the TTAB to Mr. Stoller.  It’s Exhibit E to the complaint.

Posted in Business of TMs, Fraud, Infringement, Litigation | 1 Comment »

“A” is for Apple Arrogant

Thursday, January 11th, 2007

UPDATE: A link to the complaint is available here.

I intentionally have not written about the Apple-Cisco-iPhone matter because, frankly, I thought it was a rather boring story. It seemed to me to be simply a matter of two large corporations reaching an agreement over a trademark. Run of the mill. To me, the story was less about any interesting trademark matter and more about the fame of the parties involved and, of course, the fame of Apple’s iPod, iTunes and iMac marks.

Now that Cisco has apparently filed a trademark infringement suit against Apple, the story becomes much more interesting.

On Monday, reports suggested that a license agreement between Apple and Cisco regarding the use of the iPhone mark was imminent. According to an ENN article:

Mark Chandler, senior vice president and general counsel at Cisco, said in an interview that the companies were close to finalising a deal on Monday night that would have allowed both Apple and Cisco to use the iPhone name. One aspect of the agreement called for some sort of technical interoperability between Cisco’s Linksys internet telephony products and Apple’s mobile phone. Chandler said the hope was that by making the products interoperable, it would help alleviate confusion among customers, who would be likely to be target consumers for both products.

According to online sources, Apple and Cisco left the negotiating table on Monday night with only a few terms left to iron out. However, the next day, Tuesday, Apple CEO Steve Jobs took the stage at the Macworld Expo and, amid much fanfare, unveiled the new iPhone. [Note: iPhone already appears on the Apple web site.]

ENN also reports:

Chandler said: “We indicated that it was important that the negotiations be completed before the launch of their product. Our expectation was that our name wouldn’t be used without permission. And it is a surprise when any large company announces a product using a name they don’t have a right to use.”

Chandler said Cisco made it clear after Apple’s launch that negotiations needed to be completed immediately but he said Cisco has still not heard from Apple.

The lawsuit seeks a restraining order as well as damages.

(more…)

Posted in Branding, Business of TMs, Infringement, Litigation, Technology, Trademarks | 4 Comments »

Pfizer Wins VIAGRA TM Dispute

Saturday, December 30th, 2006

viagra.jpgPfizer Inc. won a trademark case blocking drug makers in China from copying its Viagra erectile dysfunction pills’ blue diamond shape.

A Beijing court ordered the three companies to pay a $38,000 fine to Pfizer, stop producing the blue, diamond-shaped pills — which didn’t contain the active ingredient in Viagra — and print an apology in a Chinese legal newspaper, Pfizer said.

Posted in Business of TMs, Infringement, International, Litigation, Non-Traditional Marks, Trademarks | 2 Comments »

« Older Entries