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Copyright & Trademark Matters Insights and Developments in Copyright and Trademark Law

Tag Archives: Trademark Infringement

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

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

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

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

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

When Can You Claim A Color As Your Trademark?

Posted in Color, Trademark

Written by Susan Neuberger Weller In its recent decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., the Second Circuit held there was no “per se rule that would deny protection for use of a single color as a trademark in a particular industrial context.”  The Court found that the single color red on the… 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

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

Yahoo! Wins $610 Million Trademark Infringement and CAN-SPAM Award Over Nigerian Advance Fee Fraud Suit

Posted in Litigation, Trademark, Trademark Infringement

Written by Joseph M. DiCioccio This week, Yahoo! won a $610 million default judgment in the United States District Court for the Southern District of New York in a case involving the infamous Nigerian Advance Fee Fraud perpetrated through the Defendants’ infringing use of Yahoo!’s trademarks and spam. Online scams and hoaxes are just a fact of life in the Internet… Continue Reading

Google AdWords Litigation Update – Trademark Holders Denied Class Certification in U.S. Lawsuits

Posted in Google Adwords, Litigation, Remedies, Trademark, Trademark Infringement

Written by Jamison Arterton In the latest Google AdWords decision, a U.S. Federal District Court judge in Texas refused to certify two classes of advertisers who filed separate infringement suits against Google Inc.  The complaints, filed in 2009, each claim that Google sold search terms that included registered trademarks to advertisers who were not affiliated… Continue Reading

Google Adwords Decision in Europe: Trademark Owners May Prevent Competitors From Using Trademarks As Keywords

Posted in Google Adwords, Litigation, Trademark, Trademark Infringement

Written by Geri Haight Remember last year when the European Union’s Court of Justice ruled that Google did not violate European Union law by selling trademarks as keywords and thereby permitting advertisers to purchase and use keywords corresponding to their competitor’s trademarks in Google ads?  The decision let Google, as an intermediary, off the hook for trademark… Continue Reading

Remedies for Cybersquatting: Comparison of the UDRP and ACPA

Posted in Anticybersquatting, Domain Name, Litigation, Remedies, Trademark Infringement, Uniform Domain Name Dispute Resolution Policy

Written by Jamison Arterton Last month, the kitchen and bath giant, Kohler Co., filed an anti-cybersquatting suit in federal court in California against several cybersquatters.  In its complaint, Kohler alleges that it previously paid the named defendants $500 to transfer a domain name incorporating the KOHLER trademark in exchange for their agreement that they would not register any… Continue Reading