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Posts Tagged ‘infringement’

A trademark dispute can take years to resolve before the courts and/or the USPTO. But public opinion can move much quicker. And rapidly moving pressure from public opinion can wreak havoc on the normally slow moving trademark dispute process.

Such was the case just yesterday as news online exploded about a dispute between West Sixth Brewing and Magic Hat Brewing over logos that Magic Hat believes are likely to be confused. [The news reports, of course, misreported many aspects of the matter - but that is another issue for another day.]

West Sixth generated and received some favorable news and social media coverage early in the day on Tuesday (see for example: http://www.aceweekly.com/2013/05/lexingtons-west-sixth-brewing-responds-to-magic-hat-lawsuit/) including a petition with more than 6,000 signatures already, Facebook posts, and a domain name www.nomoremagichat.com that forwards to its webpage on the topic. Many comments were posted on both company’s Facebook pages about the trademark trademark issue.

Last night, Magic Hat responded online. They released their side of the story. including letters from counsel for West Sixth that purport to show that West Sixth had already agreed to change the logo at issue. See documents below.

While I don’t know how this dispute will be resolved, I do know that this type of social media and public reaction is more and more likely to be a part of future trademark disputes. Brands are, at their core, about customers. And customers, directly or indirectly, help the businesses at issue come to the decisions they must make about their brands. And social media fuels these types of reactions and makes the potential for a loud and large public reaction easier and faster than ever.*

* I first noted this trend more than 2 years ago in January 2011. See slide 14 here.

Magic Hat Brewing and West Sixth Brewing by Mary Beth Popp

“Want” trademark issues?

Posted by ipelton on: December 11th, 2012

Guest post by (recently sworn-in attorney and former Erik M. Pelton & Associates intern) W. Reid Morris:

Social media websites are a dime a dozen these days. A lot of them  include imbedded links that allow users to quickly share an article, product, or image on your preferred social media platform. While some websites imbed only a few of the most familiar channels for sharing their content, others provide hundreds of different social media channels for sharing content. I came across one site which provided 328 different options for sharing the site’s content on various social media platforms that span the globe, with everything from AmenMe! and Baang to Yuuby and ZingMe.

There are the platforms that most Americans have heard of like Facebook, Twitter, and Pintrest which allow you to “Like”, “Tweet”, or “Pin It” when you find something that interests you. Of course, there are other options like Tumblr and Reddit where you can share your finds with the respective online communities. These social media sites share some similar features while striving to deliver things a little bit differently in an effort to distinguish themselves and gain market share. One feature that they all share is strong brands built around great trademarks and brand names.

Last month, Facebook lawyers filed a response to a trademark infringement suit filed in the US District Court for the Eastern District of Michigan by an undoubtedly smaller social media competitor, Want, as found at wantbutton.com. It seems that Want’s service is naturally based around a “Want” button, and Facebook recently tested a new feature allowing their users to “Want” something by clicking a link. This service goes in addition to the existing actions Facebook let users digitally engage in like “Share”, “Comment”, “Like”, or “Promote”.

[a "Want" button from wantbutton.com]

Want’s complaint included information about a number of federal trademark registrations that the company owns for the term WANT. Facebook’s response to the claims made by Want in relation to their registered trademarks was that Want does not own any rights in the term “want.” How could this be if Want has valid federal trademark registrations for WANT?

I am of the opinion that the lawyers at Facebook are not too worried about this one because Want is skating on pretty thin ice with their registered trademarks. For Want’s registered trademarks to do them any good in court, the court will have to find that 1) that the registrations cover the type of use that Want claims Facebook infringed, and 2) Facebook did, in fact, infringe on the mark in their use of their own “Want” button.

Unfortunately, Want has built their brand, as it currently appears to exist, around a terrible trademark. Want must have been either swinging for the infield when they went about developing their brand or they failed to consult a trademark attorney. In terms of the way that social media operates, a “Want” button, is extremely descriptive of the function it performs. To try to build a brand around an unquestionably descriptive and arguably generic term is almost always going to be bad for business.

The lesson to take away is that one of the keys to building a strong brand in a national and often global marketplace is having a unique and identifiable brand name that you can exclusively own. The best way to go about doing this is to consult a licensed trademark attorney who can help you identify, develop, and protect your brand name so that you can be on the path to becoming the next Facebook®.

[Editor's note: Facebook has itself registered "Like" as a trademark for a feature that allows users to share the fact that they like something online, which makes it ironic that part of Facebook's defense against "Want" is to note just how prevalent the term is.

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Louboutin and YSL dispute over red sole trademark continues

Posted by ipelton on: December 3rd, 2012

In September, the Second Circuit issued a widely anticipated opinion regarding in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc. The opinion has been summarized already by many trademark scholars. In short, the appeals court found that Louboutin has rights in a red sole when the remaining colors of the shoe are in contrast to the red sole. And as applied to the dispute with YSL, who’s shoe is monochromatic, the Second Circuit found that YSL was technically not using the Louboutin trademark and was not a mark confusingly similar to it, thus finding that a trademark infringement claim could not be sustained. (Though some have wondered why Louboutin wasn’t given the chance to show why the all red design may have caused actual confusion in the marketplace with their contrasting color design.). For a far better and more detailed summary, see Rebecca Tushent’s 43(B)log post.

Louboutin”s registered trademark

However, two important matters remain in this case: (i) the proceeding has not actually been dismissed by the Court, and (ii) the Court’s opinion directs the registration to be limited: “We therefore instruct the Director of the Patent and Trade Office to limit the registration of the Red Sole Mark to only those situations in which the red lacquered outsole contrasts in color with the adjoining “upper” of the shoe.” 2nd Circuit at p. 30. The Louboutin registration has not been changed in any manner to date. However, since the case has not been dismissed, it might be expected that the USPTO would wait for finality, and to ensure that there are no further proceedings or appeals.

Regarding a dismissal by the Second Circuit, it seems the parties are entangled in a disagreement over the language of an order to withdraw all the other claims and to dismiss the proceeding. Specifically, they dispute whether the claims of Louboutin should be “dismissed” and “with prejudice.” Or whether the proceeding should be disposed of with some other language. The parties’ have each submitted several letters to the Court over the last few weeks addressing this matter. For details, see the public filings below, presented in reverse chronological order (most recent filing first).

As a result, the final chapter in this dispute may not have been written yet. And even after this dispute is over, important questions remain, such as: Will Louboutin seek to enforce its (modified) trademark against others? Does the Second Circuit opinion strengthen Louboutin’s claims against users of a red sole and contrasting colors?

Second Circuit filings regarding dismissal of claims in Christian Louboutin SA v. Yves Saint Laurent, Inc.

Last week saw many developments and stories related to trademarks. Since I started this blog more than two years and several hundred posts ago, I honestly cannot recall a week with so many trademark stories!

Here is a brief rundown of the key trademark stories of last week:

Justin Bieber makes trademark news – on  Friday, the celebrity gossip website website TMZ reported that Bieber’s attorneys sent a cease and desist demand to the maker of an app game called JOUSTIN’ BEAVER. The app makes filed for a trademark registration in the USPTO a few weeks ago. TMZ posted a copy of the demand letter. As a result of the coverage, the app received a lot of attention – and downloads – and broke into the iTunes top 100.  As of the weekend, the app was still available in iTunes and the Android marketplace. 

Wall Street Journal featured article on Start-Ups ‘Shame’ Bigger Companies: ‘Coming Down Hard on the Little Guy’ - the article references several trademark disputes include the one involving EAT MORE KALE and Chik-fil-A’s EAT MOR CHIKIN slogan, and noted the increasing role that social media campaigns can play for accused infringers. 

Trademark scams - the USPTO updated the trademark page of the USPTO.gov website on Friday to include a warning about solicitations sent to trademark applicants and registrants that are misleading and of questionable value: WARNING: NON-USPTO SOLICITATIONS THAT MAY RESEMBLE OFFICIAL USPTO COMMUNICATIONS: Be aware that private companies not associated with the USPTO often use trademark application and registration information from the USPTO’s databases to mail or e-mail trademark-related solicitations.

The New York Times featured an article on trademarks as well: Trademarks Take On New Importance in Internet Era – The article does not focus as much on the Internet as the headline implies. But the article is remarkable for noting that, in the dispute over the PRETZEL CRISPS trademark, “Princeton Vanguard already has spent $1 million on legal fees” defending against Frito-Lay.

USPTO held roundtable on  “Future Plans for USPTO ID-Class Practice” - on Friday the USPTO convened a public meeting exploring some issues on the possible changes to the ID manual and other ID issues. I attended the meeting in person (it was also webcast) and some interesting ideas and feedback were discussed. My guess is that in the next year the USPTO will likely move to trim the size of the ID manual and to explore introducing a hierarchical index of the manual as an option for applicants and attorneys to use in finding the correct identification and the necessary level of specification.

Bo Muller-Moore, the owner of EAT MORE KALE, and a filmaker launched a Kickstarter project called “A Defiant Dude” – the project seeks to make a documentary film. “By helping make this documentary I want to shine a light on this issue, my battle, and other trademark bullies, too.” In less than a week, more than 200 people have signed up to contribute to fund the film.

News broke that Apple is being sued not only in China but also in California regarding the IPAD trademark- Apple claims that it  bought Proview’s worldwide rights to the iPad trademark. Proview argues that the rights Apple claims are not all valid and that Apple concealed its identity in using a shell company to contract with Proview. See Apple faces new iPad trademark challenge in California (The Telegraph).

COACH defeated at appellate court – The Court of Appeals for the Federal Circuit ruled on an appeal that the Trademark Trial and Appeal Board properly held that Triumph Learning’s COACH mark for educational software was not confusingly similar to or diluting the COACH handbag and accessories trademark.

Michael Jordan Sues Chinese Sportswear Company Over Use of Name (NY Times)

And, of course, the LINsanity continued – Jeremy Lin made the cover of Sports Illustrated for the 2nd week in a row, and the number of Lin inspired (LINspired?) USPTO trademark applications continued to grow. They now include: J Lin, LINDERFUL, LINSANE, lin-sational, LINITLESS, All LIN,  LINSPIRATION, I’M A LINNER,  LINNING IS THE ONLY THING, MARKET LINQUIDITY (filed by Nasdaq!), Air Lin

The New York Times website’s Dealbook column last Friday evening provided an update on the trademark story it covered just a few weeks ago: Willa has successfully fended off Proctor & Gamble and their Wella trademark

The original Times story two weeks ago garnered a lot of attention (and included a quote from me!). Perhaps P&G felt some backlash and heat for being portrayed as picking on a small business. The original story certainly was sympathetic to the plight of the Willa trademark.

Here is the key quote from the article about the dispute’s resolution:

Lawyers for Ms. Prunier also declined to provide additional specifics about the settlement, other than confirming that their client can continue to use the name Willa for her line of lip balm, facial masks and other skin care products.

These types of agreements are common place. While I have no knowledge of the specifics of the settlement agreement here, it is quite possible that Willa’s owners would have agreed never to use a logo that looks like Wella’s logo, never to use the trademark on some products, and other limitations. While such agreements are quite common, they are only possible when the small business has the guts and the funds to stand up the bigger company. Very often they don’t have the resources to put up any fight and the big company therefore succeeds regardless of how weak or strong the legal arguments were.

Hats off to Willa for taking on ‘Goliath’!

image from www.willaskincare.com