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Category Archives: Trademark Infringement

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Can an Emoticon be Protected as a Trademark?

Posted in 15 U.S.C. 1051(b), Emoticon, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller Gap Inc. and Diane Von Furstenberg’s company DVF Studio have asked the federal court in the Southern District of New York to rule on whether the heart emoticon <3 can be protected as a trademark. Their declaratory judgment complaint filed against VeryMeri Creative Media Inc., 13 civ 8943 (December 17, 2013),… Continue Reading

Google, Yahoo, and Ad Networks Agrees to Set of Best Practices to Combat Online Piracy

Posted in Copyright, Copyright Infringement, Counterfeits, Digital Millenium Copyright Act, Safe Harbor, Trademark Infringement

Written by: Joseph M. DiCioccio The United States Intellectual Property Enforcement Coordinator Victoria Espinel recently blogged about a new effort to combat online piracy of intellectual property.  The broad-based effort attempts to leverage the participation of several large internet/publishing companies (Google, Yahoo, Microsoft, AOL and Condé Nast), advertising networks (24/7 Media, Adtegrity) and the Interactive… Continue Reading

The Latest Keyword Advertising Battle: The 10th Circuit Finds No Infringement Based on Use of Another’s Trademark to Generate Sponsored Advertisements

Posted in Google Adwords, Keyword advertising, Trademark Infringement

Written by: Jamison Arterton Over the past few years, numerous trademark infringement suits have been filed over keyword advertising.  Last month, the 10th Circuit weighed in on this subject, issuing a decision with broad implications.  In 1-800 Contacts, Inc. v. Lens.com, Inc. , the 10th Circuit held that the use of another’s trademark to generate… Continue Reading

Hells Angels and Toys “R” Us Settle “Death Head” Trademark Litigation

Posted in 15 U.S.C. 1051(b), Dilution, Fraud, Intent-To-Use Applications, Trademark, Trademark Infringement, Trademark Prosecution

Written by: Susan Neuberger Weller When I think of the Hells Angels, what immediately comes to mind are  a notorious gang of men in leather on Harley-Davidson motorcycles, the 1960’s counterculture, and news reports of illicit activity. When I think of Toys “R” Us, what immediately comes to mind are Barbie® dolls, Candyland® board games,… Continue Reading

RG3 and Common Law Trademark Rights: What You Don’t Know Can Hurt You

Posted in Common Law Marks, Trademark, Trademark Infringement, Trademark Prosecution, Trademark Searching, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller  Following in the footsteps of many sports and entertainment celebrities, the Washington Redskins’ quarterback Robert Griffin III, through his company Thr3escompany LLC, filed a number of US trademark and service mark applications for various marks including his full name as well as his nickname RGIII, sometimes used as RG3. The… Continue Reading

Counterfeits, Trademark Infringement, and Contributory Liability: Your Vendors are Your Problem

Posted in Contributory Infringement, Counterfeits, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller  Counterfeit goods seem to be everywhere, and efforts to police their ubiquitous existence often seem futile. However, a recent decision involving counterfeit Coach products should inspire those who host vendors of counterfeit products to rethink their business strategy.

More About Trademark Surnames: The Borghese Dispute

Posted in Surnames, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller  Right on the heels of our surname blog comes a New York Times article on a long-running trademark litigation over rights to the Borghese surname. The Borgheses hail from an Italian noble family and their using the family history for marketing purposes is what prompted a lawsuit which goes to… Continue Reading

Louboutin Sees Red Again: Protecting Color as a Trademark

Posted in Color, Fashion, Litigation, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller  Christian Louboutin filed suit last week in Federal District Court in New York against Charles Jourdan Fashion Footwear and unnamed companies and John and Jane Does for trademark counterfeiting and infringement and other related claims based upon the Defendants’ sales of women’s shoes bearing red soles. As we previously reported,… Continue Reading

Laches, Acquiescence, and Trademark Injunctions

Posted in Trademark, Trademark Infringement

Who Should Be Upstream Without a (Greek) Paddle?  By: Susan Neuberger Weller On May 8, a long time manufacturer of ceremonial paddles marketed to fraternities and sororities filed a petition for certiorari with the US Supreme Court seeking relief from an injunction barring him from using Greek organizations’ trademarks in his advertising. Thomas Kenneth Abraham d/b/a… Continue Reading

The Issues of Trademark Infringement and Dilution Go “Wild”

Posted in Dilution, Trademark, Trademark Infringement

By: Susan Neuberger Weller Those of us in a certain age bracket will remember Mutual of Omaha’s “Wild Kingdom” television program that first began in 1963. The Emmy Award-winning show’s first run ended in 1986, and the show went into production again in 2002 for broadcast on the Animal Planet network. The show is about… Continue Reading

The New Generic Top-Level Domains and the New Trademark Clearinghouse: Deciding Whether to Register Your Brands

Posted in Anticybersquatting, Domain Name, gTLD Issue, Trademark, Trademark Infringement, Uniform Domain Name Dispute Resolution Policy

 By: Susan Neuberger Weller The Internet Corporation for Assigned Names and Numbers (“ICANN”) is the organization that oversees domain names worldwide.  It recently began accepting new applications for expanding the number of generic top-level domains (“gTLDs”) on the Internet. The most popular gTLDs until now have included .com, .info, .org, and .net. With the approval… Continue Reading

Are Dr. Dre’s Claims of Likelihood of Confusion and Dilution Enough to “Beat” His Opponents?

Posted in Dilution, Section 2(d), Trademark, Trademark Infringement

Written by Susan Neuberger Weller Rapper Dr. Dre and the company he co-founded, Beats Electronics, LLC, are on the offensive at the US Trademark Trial and Appeal Board challenging a multitude of third-party applications for marks which consist of or contain the word “Beat”. The company owns a number of trademark registrations for use of… Continue Reading

David Can Beat Goliath in the Trademark World… Just Ask Mixed Chicks!

Posted in Trademark, Trademark Infringement

By: Susan Neuberger Weller On November 2, 2012, a federal jury in the Central District of California awarded Mixed Chicks LLC, a beauty supply company for mixed-race women, $839,535 in actual damages and $7,275,000 in punitive damages for willfully infringing the MIXED CHICKS® trademark and trade dress with its MIXED SILK line of products. Mixed… Continue Reading

Google and Rosetta Stone Settle AdWords Trademark Infringement Suit

Posted in Google Adwords, Trademark, Trademark Infringement

Written by Geri Haight Six months after the U.S. Court of Appeals for the Fourth Circuit reversed the district court’s dismissal of Rosetta Stone’s trademark infringement lawsuit against Google, the parties issued a joint statement today announcing that they have settled their legal dispute. The parties stated:  “Rosetta Stone Inc. and Google have agreed to dismiss the… Continue Reading

Update: S. 3523 Passes U.S. Senate Judiciary Committee

Posted in Copyright, Copyright Infringement, Fashion, Legislation, Trademark Infringement

Written by Susan Neuberger Weller The bill to extend intellectual property protection to the fashion industry, S. 3523, the substance of which we reported recently, has passed the US Senate Judiciary Committee without amendment. By voice vote on September 20, the bill passed with Senators Lee (R-Utah), Kyl (R-Ariz), Cornyn (R-Texas) and Coburn (R-Okla.) voting… Continue Reading

Louboutin Wins Round Two Against Yves Saint Laurent in Fight Over Red Soles

Posted in Color, Fashion, Litigation, Trademark, Trademark Infringement

Written by Joseph DiCioccio The Second Circuit recently issued an opinion in the Louboutin v. Yves Saint Laurent trademark case.  To refresh your memory, Louboutin, the high-end women’s shoe designer, had secured a U.S. trademark registration for the color red as used on the outsoles of women’s shoes.  Yves Saint Laurent had been selling shoes… Continue Reading

ICANN’s New gTLDs Program: Disputes, Comments and Objections

Posted in .XXX Domain Names, Domain Name, gTLD Issue, Trademark, Trademark Infringement

Written by Geri Haight What if someone applied for a new generic Top Level Domain (gTLD) that is confusingly similar to the gTLD applied for by your company?  Who has standing to file an objection or to submit a public comment in response to an applied-for gTLD?  These are the questions that many participants and observers… Continue Reading

Avoid a “Heart Attack”: Promptly Register Your Trademarks

Posted in Intent-To-Use Applications, Litigation, Trademark, Trademark Infringement, Trademark Prosecution

Written by Susan Neuberger Weller On July 6, 2012, in Lebewohl v. Heart Attack Grill, LLC , a New York Judge made it possible, in the words of the Wall Street Journal, for people to continue to “Order Up a Heart Attack” in, at least, Las Vegas and Manhattan.  Since 2004, the Second Avenue Deli, a… Continue Reading

Has Someone Applied to Register Your .BRAND? Find Out On June 13th

Posted in Domain Name, gTLD Issue, Trademark, Trademark Infringement

Written by Geri Haight Last year, the Internet Committee for Assigned Names and Numbers (ICANN), the organization responsible for the coordination of the global Internet domain name system, announced a plan to bring sweeping changes to the Internet’s generic top level domain (gTLD) structure. Internet users are familiar with gTLDs, if not by name. gTLDs… Continue Reading

Fourth Circuit Resurrects Rosetta Stone’s Challenge to Google’s AdWords Program

Posted in Dilution, Google Adwords, Litigation, Trademark Infringement

On Monday, the Court of Appeals for the Fourth Circuit reversed the district court’s decision ending Rosetta Stone’s trademark infringement case against Google.  Rosetta Stone’s complaint, filed in 2009, alleged that Google infringed Rosetta Stone’s trademark rights by selling its trademarks as keywords to third-party competitors without Rosetta Stone’s permission.  Under Google’s AdWords program, Google offers advertisers the ability… Continue Reading

Applying for a New gTLD? Registration Deadline of March 29, 2012 Approaches As Cybersquatting Continues To Rise.

Posted in Domain Name, gTLD Issue, Trademark Infringement, Uniform Domain Name Dispute Resolution Policy

Time is running out to apply for the Internet Corporation for Assigned Names and Numbers’ (ICANN) new program to dramatically expand the number of generic top-level domain names (gTLDs).  This controversial program has the potential to add countless new names to the currently available top-level domains (like .COM and .NET) by allowing companies to apply to serve… Continue Reading

Rules for Use of Music at Political Campaign Events

Posted in Copyright, Copyright Infringement, Fair Use, Music, Trademark, Trademark Infringement

National Public Radio had a story yesterday on politicians’ use (or misuse) of music at campaign events.  It sets forth three seemingly simple rules for politicians to follow in order to avoid copyright and/or trademark based claims arising from such use:  (1) know your venue; (2) know when to ask for permission; and (3) “know when to fold’em.”   The American… Continue Reading

WIPO Named Exclusive Arbitrator of “Legal Rights Objections” for New gTLD Program

Posted in Domain Name, gTLD Issue, Trademark, Trademark Infringement, Uniform Domain Name Dispute Resolution Policy

Written by Jamison Arterton ICANN has recently appointed the World Intellectual Property Organization (WIPO) to be the exclusive provider of dispute resolution services when a third party files a formal “Legal Rights Objection” or “LRO” to a pending application under the new gTLD program.  In assessing the validity of an LRO, the WIPO panel will decide whether… Continue Reading

International Organizations Join the Opposition to ICANN’s New gTLD Program

Posted in Domain Name, gTLD Issue, Trademark Infringement

ICANN will start accepting applications for new gTLDs on January 12, 2012.  But not before further public opposition to the program builds.  Most recently, the United Nations, International Monetary Fund and a host of other intergovernmental organizations (“IGOs”) have joined the growing list of opponents to ICANN’s new program.  A recent letter sent to ICANN on behalf of… Continue Reading