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),  contends that VeryMeri cannot claim intellectual property rights in its stylized heart logo, which consists of or incorporates the <3 emoticon, since that logo/emoticon is “widely used in connection with apparel and related products,” since the stylized heart logo “is nothing more than a commonly used and well-known ‘emoticon’ or metacommunicative pictorial representation of a heart design,” and because “no one entity can be said to have the exclusive right over all forms of this [emoticon heart] design.” Continue Reading Can an Emoticon be Protected as a Trademark?

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 sponsored advertisements does not constitute trademark infringement.

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

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

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.

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

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 trial this summer in New York. The case, Borghese Trademarks Inc. et al. v. Borghese et al., 1:10-cv-05552 (SDNY), was brought by the cosmetics company originally founded by Princess Marcella Borghese and Revlon in the 1950s. In 1976, Revlon bought the Borghese cosmetics brand and in 1992 sold it to Georgette Mosbacher who became the CEO. The Defendants include Princess Marcella’s son Francesco Borghese, his wife Amanda, and his two sons Scipione and Lorenzo. The Borghese family has its own cosmetics line which it does not sell under the Borghese surname but in connection with which it has been touting the family history, which obviously requires use of the family name. The owner of the rights to the BORGHESE trademark claim that the use of the family name by the family in connection with its own cosmetics company will create the false impression that there is a connection or relationship between Borghese Trademarks Inc. and its products and the family’s cosmetics line. False impressions of an association, endorsement, affiliation, sponsorship, relationship, and the like of the type alleged are not permitted under trademark law.

 The take away from this saga is that even a well-known, Italian noble family with a long lineage including rulers, philosophers and a pope doesn’t have an absolute right to use its family name as a trademark or, perhaps, for general marketing purposes. Thus, before you seriously consider using your family surname or someone else’s family surname as a trademark or company name, think again. You probably can do better than that.

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, Louboutin was unsuccessful in its bid to claim exclusivity in the color red when used in any capacity for women’s shoes in its action against Yves Saint Laurent, but still owns valid US trademark Registration No. 3,361,597 for the color red when used on the sole of women’s shoes. The allegedly infringing Charles Jourdan shoes appear to use the color red only on the souls of the shoes. No response to the Complaint has yet been filed by the Defendants.

 Claiming color as a trademark is certainly possible, but can be tricky as noted in our earlier blog on the subject.

We will keep you updated as this new case unfolds. Stay tuned. Continue Reading Louboutin Sees Red Again: Protecting Color as a Trademark

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”

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 Chicks LLC, v. Sally Beauty Supply LLC, et al., SACV11-00452 AG (FMOx) (C.D.C.A. 2012). On November 29, the infringer Sally Beauty Supply LLC agreed to a settlement of $8.5 million, which is larger than the actual jury award. It did so in order to avoid further hearings on and awards to Mixed Chick of its’ attorneys’ fees and of Sally Beauty’s profits as a result of its infringing activity.

Mixed Chicks LLC, a relatively small company founded in 2004 with approximately $5 million in annual revenue and approximately 15 full-time staff members, filed suit in March 2011 against Sally Beauty Supply LLC and related companies for federal and state trademark infringement, trade dress infringement, false designation of origin, and unfair competition claiming that Sally Beauty’s line of MIXED SILK hair care products infringed both the MIXED CHICKS ® trademark as well as the overall appearance of that line of products. The Complaint also claimed that Sally had “programmed or caused the search engine on the Sally Beauty website to operate in [a] manner to cause confusion or mistake, or to deceive as to the origin of the Mixed Silk hair care products with the intent to benefit from Mixed Chicks’ reputation and goodwill,” Apparently, when consumers searched “mixed chicks” on the Sally Beauty website only MIXED SILK products results would appear. Mixed Chicks claimed that the wrongful activity was willful and with the intent to benefit from the goodwill and reputation in the mixed race hair care product market that Mixed Chicks had developed through their specialized high-quality hair care products.  Continue Reading David Can Beat Goliath in the Trademark World… Just Ask Mixed Chicks!

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 three-year-old trademark infringement lawsuit between them and to meaningfully collaborate to combat online ads for counterfeit goods and prevent the misuse and abuse of trademarks on the Internet.” 

Continue Reading Google and Rosetta Stone Settle AdWords Trademark Infringement Suit