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.
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.
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.
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.
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 to select certain keywords that will trigger a “sponsored link” to the advertiser’s chosen website. Google displays the “sponsored link” above or next to the organic search results. The Rosetta Stone trademarks at issue, which Google included as keywords in its AdWords program, included “language library,” “global traveller” and “Rosetta Stone,” among others. Rosetta Stone alleged that Google’s sale of its trademarks to unrelated third parties for use in sponsored advertising caused consumers to follow the unaffiliated sponsored link advertisements based on the mistaken belief that the associated links/websites were owned by or affiliated with Rosetta Stone when, in fact, they are not.
In 2010, the district court ruled in Google’s favor, concluding (among other things) that “no reasonable trier of fact could find that Google’s practice of auctioning Rosetta Stone’s trademarks as keyword triggers to third party advertisers creates a likelihood of confusion as to the source and origin of Rosetta Stone’s products[.]” In the end, the district court gave Google a total victory, granting its motions for summary judgment on Rosetta Stone’s claims of (1) direct trademark infringement; (2) contributory infringement; (3) vicarious infringement; (4) trademark dilution; and (5) unjust enrichment (under Virginia law). The Fourth Circuit reversed, at least in part, remanding the issues of direct infringement, contributory infringement, and trademark dilution to the district court. In so doing, the Fourth Circuit set forth the details of some interesting bits of evidence for the district court to consider on remand. Continue Reading Fourth Circuit Resurrects Rosetta Stone’s Challenge to Google’s AdWords Program