Archives: dilution

Trademark dilution is a concept not easily understood. Although, we have written about this topic in previous posts,  a recent decision by the Trademark Trial and Appeal Board, ESRT Empire State Building, L. L. C. v. Michael Liang, Opposition No. 91204122 (TTAB June 17, 2016),  may help to further explain why it is unacceptable to dilute another’s trademark.

Continue Reading Dilution Update: NYC BEER Is Not Diluted, But The Empire State Building Is

Written by: Susan Neuberger Weller

As we all know, Super Bowl XLIX will be played this Sunday in Phoenix, Arizona between the defending Champion Seattle Seahawks and the New England Patriots. There will be events of all kinds organized all around the country focused on this football game. If you are planning something, just remember: do not use “Super Bowl” by itself or in conjunction with other words or terms in any commercial promotions of any kind including your own events, third-party events, contests, games, product promotions, or sales. You just can’t do it. Continue Reading Don’t Even Think About Advertising a SUPER BOWL Party!

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, Fisher-Price® baby toys, and Lego® blocks. What doesn’t come to mind is Hells Angels suing Toys “R” Us for trademark infringement claiming that the toy retailer is selling toys bearing the Hells Angels federally registered “Death Head” logo without authorization. You can’t make this stuff up.

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

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 wildlife, and focuses on a variety of subjects in that genre. The company recently filed suit against Couristan, Inc., a carpet and rug manufacturing company in business since 1926, alleging trademark infringement, unfair competition, deceptive trade practices, and trademark dilution for Couristan’s use of the mark WILD KINGDOM for a “safari-inspired residential carpet” collection showcasing three different animal patterns. Mutual of Omaha Insurance Co. v.  Couristan Inc., 8:13-cv-00123 (D. Neb. 2013 ). This may cause many people to ask the question, “What the heck does a carpet collection have to do with an animal wildlife television program, and why would anybody be confused about that?” A reasonable question which requires an informed answer.

  Continue Reading The Issues of Trademark Infringement and Dilution Go “Wild”

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 its various BEATS marks on headphones, speakers, headsets, and other related electronic products and has applications pending for future use on clothing and other items. As reported in the WSJ Law Blog last week, the targets of this campaign are mix of smaller, little-known companies as well as big players such as Sony.

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