Friday, December 28, 2007

Ninth Circuit Upholds Ebay’s Victory Over Use of “Smart Search” on Website

The Ninth Circuit today upheld a lower court’s decision finding that eBay, Inc’s (“eBay’s”) use of the name “Smart Search” on its Internet auction website did not infringe on the registered trademark SMARTSEARCH held by Applied Information Sciences Corp. (“AIS”). See Applied Information Sciences Corp. v. eBay, Inc., Nos. 05-56123 (9th Cir. December 28, 2007). A copy of the decision can be downloaded here. In rendering its decision, the court clarified what an owner of a federally registered trademark must establish in order to maintain an infringement action against a person using the registered trademark on goods or services that are not the same as those specified in the owner’s trademark registration.

On April 28, 1994, AIS, a specialized software vendor, applied to register the mark SMARTSEARCH (for computer software and instruction manuals sold together which allow the user to retrieve information from on-line services via phone line in the fields of agriculture and nutrition, books, chemistry, computers and electronics, education, law, medicine and biosciences, news, science and technology, social sciences and humanities). The mark was registered on January 20, 1998. AIS claims to have sold SmartSearch products from 1995 to 2004.

AIS alleged that in 2002, eBay began infringing on AIS’s registered trademark SMARTSEARCH by displaying the words “Smart Search” as a link on its homepage which led to a search page with advanced options. In 2001, AIS demanded that eBay cease using the mark or pay a license fee. After eBay refused, AIS filed its trademark infringement complaint. See Applied Information Sciences Corp. v. eBay, Inc., Case No. 04-CV-00274 (C.D. Cal.)

On cross motions for summary judgment, the district court granted eBay’s motion on the ground that AIS does not have a valid, protected interest in the mark. The district court awarded eBay costs, but denied eBay’s motion for attorney’s fees concluding that the case was not exceptional. Both parties filed appeals of the district court's decisions.

The court, reviewing de novo the district court’s grant of summary judgment, concluded that while AIS discharged its burden of establishing that it had a valid, protectable interest in its SMARTSEARCH mark, it nonetheless failed to produce any admissible evidence tending to show a likelihood of confusion. As such, the court affirmed the district court’s grant of summary judgment in favor of eBay.

Valid Protectable Interest
The court started its analysis with what AIS must show to prevail on its trademark infringement claim: (1) that AIS has a valid, protectable trademark, and (2) that eBay’s use of the mark is likely to cause confusion. See Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1047, 1053 (9th Cir. 1999).

Regarding the first element (establishing a valid, protectable trademark), AIS could establish this protectable interest by showing (1) it has a federally registered mark in goods or services; (2) its mark is descriptive but has acquired a secondary meaning in the market; or (3) it has a suggestive mark, which is inherently distinctive and protectable.

The court agreed with AIS that solely on the basis of its federal registration of the SMARTSEARCH mark, AIS had a valid, protectable interest: “[B]y demonstrating that it held a federal registration, AIS made a prima facie showing that it held a valid, protectable interest in the use of the SmartSearch mark in connection with the goods listed in its registration.” Slip op. at 16875.

Scope of the Protectable Interest
The next part of the court’s analysis involved the scope of the trademark holder’s protectable interest. The court started with the general rule that a registered trademark holder’s protectable interest is limited to those goods or services described in its registration (citing 15 U.S.C. § 1057(b) and 15 U.S.C. § 1115(a)).

However, the court noted that the scope of validity and the scope of relief for infringement are not coextensive: “Although the validity of a registered mark extends only to the listed goods or services, an owner’s remedies against confusion with its valid mark are not so circumscribed.” Slip op. at 16875 (italics in original). The court also noted that the language of 15 U.S.C. § 1114 (infringement of a registered mark) does not limit remedies for allegedly infringing uses to those goods within the ambit of registration.

As such, a trademark owner may sue for infringement if another’s person’s use of the mark on different goods or services is likely to cause confusion with the owner’s use of the mark in connection with its registered goods. See Interstellar Starship Services, Ltd. v. Epix Inc., 184 F.3d 1107 (9th Cir. 1999) (trademark holder’s rights to protect its interest in a registered mark were not limited to infringement actions against those using the mark in connection with the goods or services specified in the registration; plaintiff not required to show that its interest extended to defendant’s use of the mark). “Having established a protectable interest by proving it is the owner of a registered trademark, the owner does not additionally have to show that the defendant’s allegedly confusing use involves the same goods or services listed in the registration.” Slip op. at 16878 (italics in original).

In this case, however, the district court concluded that because AIS’s federal registration did not include eBay’s use of the mark (as a hyperlink for a web-based trading service), AIS did not have a protectable interest, and thus could not bring an infringement action. In arriving at this conclusion, the district court accepted eBay’s argument that the Ninth Circuit’s decision in Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985) (en banc) required AIS to prove that eBay used the SMARTSEARCH mark on goods described in AIS’s registration in order to establish a protectable interest.

The Ninth Circuit called the district court’s interpretation of the Levi Strauss case “questionable” saying that its refusal to allow Levi Strauss to rely on its federal registration stemmed from the way in which Strauss pled its case. Specifically, Strauss was trying to extend its own use of its registered mark to goods not specified in its federal registration, which is different than a plaintiff arguing infringement of goods specified in its own federal registration: “Where, however, a plaintiff bases its trademark infringement claim upon the confusion the defendant’s use will create for the plaintiff’s use of its mark in connection with its own registered goods or services, that claim comes within the scope of its protectable interest.” Slip op. at 16880 (italics in original). In this case, AIS had alleged infringement of its mark in connection with the products specified in its federal registration. “Whether or not eBay ever used the SmartSearch mark in connection with goods specified in AIS’s registration is irrelevant to the question of whether AIS established a valid, protectable interest.” Id.

Likelihood of Confusion
Having found that AIS had satisfied its burden of establishing a valid, protected interest by virtue of its federal registration of the SMARTSEARCH mark in connection with the goods listed in the registration, the court next addressed whether eBay’s use of the mark was likely to cause confusion.

The court found that AIS, in opposing eBay’s motion for summary judgment, had failed to produce any admissible evidence tending to show a likelihood of confusion or addressing any of the Sleekcraft factors required for a likelihood of confusion analysis.

Thus, the court affirmed the district court’s grant of summary judgment in favor of eBay without specifically addressing whether the district court had erred in its interpretation of the Levi Strauss case.

Attorney’s Fees
After the district court entered judgment in eBay's favor, eBay filed a motion for attorney’s fees pursuant to 15 U.S.C. § 1117(a) (allowing a court to award reasonable attorney fees to the prevailing party in “exceptional cases”). Exceptional cases are those where a plaintiff’s case is groundless, unreasonable, vexatious, or pursued in bad faith. See Stephen W. Boney, Inc. v.Boney Servs., 127 F.3d 821, 827 (9th Cir. 1997)

The district court denied eBay’s motion for attorney’s fees, finding no compelling evidence that AIS’s case was exceptional. eBay appealed the district court’s denial, which the court reviewed for abuse of discretion.

The court, agreeing with the district court that AIS’s case was not frivolous and did raise debatable issues, held that the district court did not abuse its discretion in denying eBay’s motion for attorney’s fees.

Thursday, December 27, 2007

“Reverse Cybersquatting” – the dark side of the Anticybersquatting Consumer Protection Act

In a previous posting (link here), I wrote about a flurry of trademark infringement lawsuits filed by 3700 Associates, LLC (“3700 Associates”) – the developer of the Cosmopolitan Resort & Casino in Las Vegas – against various named defendants. Based on the named defendants in one of the complaints, 3700 Associates appeared to be going after domain registrants buying up domain names that were similar to its THE COSMOPOLITAN RESORT & CASINO mark for which it has two recently received registrations (word mark and stylized mark covering real estate services featuring condominiums) as well as two pending applications (word mark and stylized mark covering vacation time shares, casino services, and resort hotels).

One of the complaints, however, was against Florida resident Tim Griffin, Sr. and his company, Griffin IT Media, Inc. (“Griffin”) See 3700 Associates, LLC v. Griffin et al, Case No 2:2007cv01453 (D. Nev. Filed October 31, 2007). A copy of the complaint can be downloaded here.

Griffin owns the domain name The complaint alleges cybersquatting, unfair competition, and common law trademark infringement. The complaint carefully omits to mention the specific date when Griffin registered the domain name – only that he did register it and that the domain name links to a website with multiple click-through links.

On November 12, 2007, Griffin filed a Motion to Dismiss the case on grounds of lack of jurisdiction because neither Griffin nor his company has any ties to Nevada. A copy of the motion can be downloaded here. However, the motion’s memorandum of points and authorities also contains a scathing introduction that transforms what first looked like your typical “cybersquatting” dispute into an example of what has come to be known as “reverse cybersquatting.”

“Reverse cybersquatting” (also sometimes called reverse domain name hijacking) is when a trademark owner who wants to obtain a particular domain name files a lawsuit under the Anticybersquatting Consumer Protection Act (“ACPA”) against the domain name owner who acquired the domain name legitimately (either before the trademark owner’s mark became famous or distinctive or because of some other legitimate interest in the domain name) in order exert pressure against such owner to turn over the domain name to the trademark owner.

Whereas “cybersquatters” are ridiculed for registering domain names that contain another party’s distinctive or famous trademarks, “reverse cybersquatters” are chastised for abusing the ACPA to force innocent domain name holders into turning over domain names that were legitimately acquired simply because the domain names in question happen to contain (or are confusingly similar to) such party’s trademarks even though the domain names were registered long before the trademark in question became distinctive or famous.

According to Griffin, he registered the domain name on August 15, 2003 – long before the November 24, 2004 date that 3700 Associates announced the name of its property. If this is the case, then 3700 Associates will be hard pressed to maintain a cybersquatting action against Griffin. The plain language of Section 43(d) of the Lanham Act (15 USC §1125(d)), holds a registrant liable if the registrant (i) registers, traffics in, or uses a domain name that a) is identical or confusingly similar to a distinctive mark which is distinctive at the time of registration of the domain name or b) is identical or confusingly similar to or dilutive of a famous mark which is famous at the time of registration of the domain name and (ii) has a bad faith intent to profit from that trademark, including a personal name, which is protected as a trademark under Section 43 of the Lanham Act. See 15 U.S.C. § 1125(d)(1)(A).

How can 3700 Associates possibly maintain that its mark was either distinctive or famous at the time Griffin registered the domain name when it had not even announced its intention to use the mark at the time?

In its Response to Griffin’s Motion to Dismiss (a copy of which can be downloaded here), 3700 Associates attempts to characterize Griffin’s business model of buying and selling domain names as nefarious:
Upon information and belief, Defendants derive click-through revenue from advertising and links posted on websites linked to their domain names, as well as through the sale of domain names. In fact, as demonstrated below, Defendants collectively own over 18,000 domain names and seek to offer them to the highest
bidder. It would be surprising if Defendants owned any trademark rights in any of the domain names that they register and sell. Rather, it appears based upon Plaintiff’s initial research that Defendants’ modus operandi is to register any domain that is available and squat on it until an actual trademark owner comes knocking.
Response at 2. So, under 3700 Associates’ logic, domain name registrants should not be allowed to register domain names using words that are not currently trademarks, but which later, long after the domain was registered, become trademarks.

3700 Associates does acknowledge in its Response that Griffin registered the domain name a little more than a year before 3700 Associates announced its “The Cosmopolitan Resort & Casino” project. Nonetheless, 3700 Associates argues that once it had acquired trademark rights in the COSMOPOLITAN Marks, Griffin began to create click-through links which diverted consumers to direct competitors of 3700 Associates. Id. While this may be true and may even constitute unfair competition under federal and state law, it is not cybersquatting under §43(d).

In order to maintain its position that Griffin’s conduct constitutes cybersquatting, 3700 Associates appears to be taking a much more expansive view of the ACPA:

[T]he ACPA is intended to apply to any person who “has a bad faith intent to profit” from a mark and “registers, traffics in, or uses a domain name.” See 15 U.S.C. § 1125(d)(1)(A). As Plaintiff sets forth in its Complaint and pending Motion for Preliminary Injunction, Defendants were and are attempting to harm Plaintiff’s goodwill by using the domain name to divert consumers from Plaintiff’s website to various other Las Vegas-oriented websites offering services in direct competition with Plaintiff.
Response at 3 (emphasis in original). 3700 Associates seems to be overlooking an important part of the ACPA, namely the part about “at the time of registration of the domain name.”

Griffin’s Motion noted that 3700 Associates had filed actions against other defendants with domain name registrations incorporating the word “cosmopolitan.” The defendants in those cases apparently did not retain counsel and 3700 Associates have supposedly taken control of those domain names. While Griffin attempts to characterize 3700 Associates’ actions against these other defendants as “reverse domain name hijacking,” I strongly suspect that the defendants in those other cases are not retaining counsel because they do not have the same supportive facts as Griffin. Most of those domain names were likely registered after 3700 Associates made its announcement, which makes those defendants likely guilty of “cybersquatting.”

Mr. Griffin’s case is more the exception rather than the rule – an enterprising individual who had the foresight to stake out valuable domain names (like real estate) and register those domain names with the hope that they would one day become valuable online property. 3700 Associates now wants to characterize such enterprising foresight as cybersquatting. One man’s “modus operandi” is another man’s “business model” – 3700 Associates can cast Griffin’s ownership of the domain name however it wants, but cybersquatting under §43(d) of the Lanham Act it is not.

After a hearing on Griffin’s Motion, the court granted Griffin’s motion to dismiss for lack of jurisdiction. It will be interesting to see if 3700 Associates decides to continue to pursue the case in Florida or whether Griffin decides to pursue Rule 11 sanctions against 3700 Associates.

I don’t know for how much Griffin is willing to sell the domain name, but I would think at this stage, it would be cheaper for 3700 Associates to buy it from Griffin rather than to continue to litigate over it.

Tuesday, December 25, 2007

Johnson & Johnson gets early Christmas gift from Third Circuit in its Splenda® trade dress infringement lawsuit.

On Monday, December 24, 2007, the Third Circuit Court of Appeals held that McNeil Nutritionals, LLC (“McNeil”), the Johnson & Johnson division that makes Splenda® artificial sweetener (a brand of the artificial sweetener, sucralose), can get a second chance at obtaining a preliminary injunction against Heartland Sweeteners LLC and Heartland Packaging Corp. (“Heartland”) which produce and distribute store-brand sucralose for several supermarkets, including the Giant, Stop & Shop, and Tops supermarket chains owned by Royal Ahold NV. See McNeil Nutritionals, LLC v. Heartland Sweeteners LLC et al, No. 07-2644 (3rd Cir. December 24, 2007). A copy of the decision can be downloaded here. The Court of Appeals decision reverses in part the District Court decision by Judge John R. Padova of the United States District Court for the Eastern District of Pennsylvania which denied McNeil’s motion for a preliminary injunction.

Background articles on the dispute can be found at here and here. On December 5, 2006, McNeil filed a seven-count complaint against Heartland under federal and state law. See McNeil Nutritionals, LLC v. Heartland Sweeteners LLC et al, Case No. 06-cv-05336 (E.D. Pa.). McNeil sought relief for both the Splenda trade dress and the slogan “Made from Sugar, Tastes Like Sugar.” On December 14, 2006, McNeil filed its motion for preliminary injunction to stop Heartland from advertising, selling, or distributing the alleged confusingly similar products. After an evidentiary hearing on the motion held on February 7, 2007 and oral argument on March 13, 2007, the District Court denied the motion with respect to all of the allegedly infringing packages in a written memorandum and order dated May 21, 2007. McNeil filed a timely notice of appeal from that decision on May 29, 2007. On appeal, McNeil did not raise any arguments with respect to the “Tastes Like Sugar” slogan or any arguments under state law.

The court reviewed the District Court’s denial of a preliminary injunction for abuse of discretion with any findings of facts reviewed for clear error and any legal conclusions reviewed de novo.

The District Court denied McNeil’s motion for a preliminary injunction on the grounds that McNeil did not demonstrate a likelihood of success on the merits (the first of the four factors that a party must demonstrate to obtain a preliminary injunction). The four factors that a moving party must demonstrate to prevail on a motion for a preliminary injunction are: 1) the likelihood that the moving party will succeed on the merits; (2) the extent to which the moving party will suffer irreparable harm without injunctive relief; (3) the extent to which the nonmoving party will suffer irreparable harm if the injunction is issued; and (4) the public interest. See Shire US Inc. v. Barr Labs. Inc., 329 F.3d 348, 352 (3d Cir. 2003).

While a plaintiff, in order to establish trade dress infringement under the Lanham Act must prove that (1) the allegedly infringing design is non-functional, (2) the design is inherently distinctive or has acquired secondary meaning, and (3) consumers are likely to confuse the source of the plaintiff’s product with that of the defendant’s product, the District Court only analyzed, and sided with Heartland on, the likelihood of confusion question. As such, the court limited its analysis to only this issue. The court proceeded to apply the Third Circuit’s likelihood of confusion test – the Lapp factors. See Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983).

Regarding the first Lapp factor (degree of similarity between the plaintiff’s trade dress and the allegedly infringing trade dress), the District Court had concluded that this factor favored a finding of no likelihood of confusion for Heartland’s products except the ones sold by the Ahold supermarkets. The court’s decision reviewed the product packaging used by Heartland in its products for the Ahold supermarkets, Food Lion, and Safeway. The court could not find any clear error in the District Court’s decision regarding Heartland’s products for Food Lion and Safeway, noting that the most important differences was that the trade name “Splenda” was not present, but instead the respective stores name and/or logo were prominently displayed. Heartland did not challenge the District Court’s finding with respect to the first Lapp factor on the Ahold sucralose products, so the court accepted the District Court’s finding that it favored McNeil.

Regarding the third Lapp factor (degree of consumer care), the District Court had concluded that the level of care and attention consumers use when purchasing no-calorie sweeteners are actually heightened because they often purchase them for health reasons. The court could not find any clear error in the District Court’s decision that this factor did not weigh in favor of McNeil because the reasonably prudent consumer in this case exercises some heightened care and attention when buying sucralose because health considerations typically override the products’ low cost.

Regarding the sixth Lapp factor (evidence of actual confusion), the District Court held that there was no credible evidence of actual confusion, and thus the factor did not favor either McNeil or Heartland. The court could not find any clear error in the District Court’s decision to reject the single affidavit of consumer confusion submitted by McNeil from a so-called “surgical strike” shopper (one who intentionally shops at a faster pace than others), finding such a shopper to be brand indifferent and otherwise unrepresentative of the typical shopper,

Because the court did not find any error with the District Court’s application of the Lapp factors, the question remained whether the District Court nonetheless committed clear error in not finding a likelihood of confusion for those products where District Court found that the first Lapp factor favored McNeil (i.e., the Heartland sucralose products sold by the Ahold supermarkets).

The court held that the District Court committed clear error in that there was no way the District Court could have ultimately balanced the Lapp factors against McNeil weighing the first, second, seventh, eighth, and ninth Lapp factors in McNeil’s favor (and the third, fourth, and tenth factors in favor of neither party) with respect to the sucralose sold by the Ahold supermarkets. In particular, the District Court clearly erred in the ultimate balancing of the Lapp factors because it did not provide sufficient weight to the single most important factor in determining likelihood of confusion – the degree of similarity – which the District Court found in favor of McNeil.

The sucralose products sold by the Ahold supermarkets did not have a store name or logo prominently displayed, which would have substantially reduced the degree of similarity and thus the likelihood of confusion because the more a store’s name and/or logo are present around that store’s shoppers, the more likely those shoppers will know well that name and/or logo, which in turn serves to differentiate materially a store-brand packaging that displays such name and/or logo prominently. Also, the product name “Sweetener” appears at the top-center of the front of the boxes, in italicized blue font, which is a similar color and font as that used on boxes of Splenda.

Sucralose product sold by Ahold's Giant Supermarket

Regarding the issue of Heartland’s use of yellow-colored packets, the court was not sympathetic to McNeil:
[J]ust because a consumer sees yellow packaging in the sugar aisle does not mean that she believes McNeil or Splenda to be the source, especially because consumers are generally aware of the use of pink and blue by manufacturers other than those of Sweet ‘N Low and Equal, respectively. The sugar aisle in a representative grocery store also contains yellow packages of products other than sucralose, including sugar itself. In this factual context, we cannot conclude that whenever any other sucralose producer uses yellow packaging, consumers are likely to associate that product with Splenda.
Slip op. at 27.

"The Yellow Stuff"

The court affirmed the District Court’s denial of preliminary injunctive relief as to the Food Lion and Safeway sucralose products, but reversed the denial as to the Ahold sucralose products. The court remanded the case to the District Court to consider whether McNeil establishes a likelihood of success on the remaining elements of trade dress infringement under the Lanham Act as well as the remaining factors for preliminary injunctive relief.

Monday, December 24, 2007

Trademarking Christmas -- Is Nothing Sacred?

A nice Christmas-related trademark story courtesy of The Huffington Post (link here), which writes about the following Christmas themed trademarks.

The first two are held by Liberty Counsel (both for promoting public awareness of the legal issues relating to religious celebrations):


I (heart) CHRIST MAS (and design)

The other mark mentioned is MERRY CHRISTMAS. IT'S OKAY TO SAY IT. held by the Alliance Defense Fund (for promoting public awareness about the law as related to expression in public settings and religious liberties).

Both groups are tackling the cause of saving “Christmas” from the growing movement towards businesses avoiding references to “Christmas” so as not to offend any non-Christians:

For the past few years, having forgotten the real "spirit of Christmas," a rag-tag bag of Politically Correct Christmas Crusaders have taken upon themselves the role of patrolling stores and byways to see who is saying "Merry Christmas" in just the right way and making a list of who should be punished.

The Christmas Enforcers have - really! - started "making a list" of stores that "are naughty and nice." (Careful here Enforcers - Santa might follow your lead and sue you for Claus Infringement)

For these lawyers, it turns out that being a "naughty" store has nothing to do with unfair employment practices or selling products that are harmful to the environment. "Naughty" means that they wish their Jewish and Muslim and Buddhist customers "happy holidays" rather than "Merry Christmas." (O! Torquemada!)

And for a store to be placed on the "nice" list does not mean that it gives a portion of its profits to the sick and needy. It means having "Christmas all over the stores and TV ads." Yikes!

To all of my loyal blog readers, I say what famed KMOX radio talk show host Jim White ("The Big Bumper") would say -- Have any kind of holiday you want!

Friday, December 21, 2007

eBay gets CoinBay to change to CoinDay

Back on December 5, 2007, eBay sued Florida coin collector Bob Martino, the owner of the website, for trademark infringement and unfair competition in the U.S. District Court for the Northern District of California. See eBay Inc. v. Martino, Case No. 3:2007cv06172 (N.D. Cal.). eBay alleged that the website name, logo and its "Buy Now" feature infringed eBay's trademarks.

The parties reached a settlement in their dispute with Judge Breyer accepting a final judgment stipulated by the parties. See article in AuctionBytes (link here). Under the settlement agreement, Martino has agreed to change his website to CoinDay and to cease using of the “Buy Now” phrase and logo (instead naming it “Purchase Now”). eBay is allowing Martino to continue to use the website to redirect users to until January 14, 2008.

Battle of the Beers -- Fitger's vs. Fitger

The Duluth News Tribune reported on the grant of a preliminary injunction in favor of Duluth, Minnesota-based Fitger's On-the-Lake ("Fitger’s") against Connecticut-based The Fitger Company ("Fitger Company") over the latter’s use of a similar looking logo on its beer as that used by Fitger’s (link here).

On November 21, 2007, Fitger’s On-the-Lake, LLC filed a trademark infringement lawsuit in the U.S. District Court for the District of Minnesota against The Fitger Company, LLC; The Fitger Brewing Company LLC; Michaud Distributing, Inc.; United States Fire-Arms Manufacturing; and Douglas Donnelly. See Fitger's On-the-Lake, LLC v. The Fitger Company, LLC, et al, Case No. 0:2007cv04687 (D. Minn.).

The suit alleged that the Fitger Company selling beer using Fitger's name and logo and that such use is likely to cause confusion as to the source and origin of its beer.

The hearing on the temporary injunction was held on Tuesday before U.S. District Judge Michael Davis, who issued the injunction the following day. Davis’ order found that Fitger’s had suffered irreparable injury as a result of defendants’ actions and will continue to suffer irreparable injury if defendants’ trademark infringement was allowed to continue. Davis ordered the defendants to stop using any of Fitger’s trademarks, logos, domain name, Web site or Web page or anything that would cause confusion with Fitger’s goods. Davis further ordered the defendants to immediately recall all of the beer, promotional materials, packages, labels, cartons, art work and any material that would infringe, dilute or cause confusion with Fitger’s marks.

On January 24, 2006, Fitger Company filed two §1(b) intent-to-use trademark application – one for the mark FITGER’S (for beer) and the other for FITGER BREWING COMPANY DULUTH and Design (for beer). The applications were published for opposition on September 19, 2006 and October 10, 2006, with no opposition filed within the statutory time frame in either application. Fitger Company recently filed its statement of use claiming first use in commerce on October 25, 2007 and November 27, 2007.

Even after the lawsuit was filed, Fitger Company filed another trademark application seeking registration of a mark that appears to be associated with Fitger’s. See design application here which seeks to register the below image, which happens to be the same picture used by Fitger’s on its website.

Interesting to note that Fitger’s filed its own §1(b) intent-to-use trademark application on June 30, 2000 for the mark FITGER’S (for beer). The mark was published for opposition on May 1, 2001, with no opposition filed. However, no statement of use was ever filed, and the application went abandoned on January 25, 2002.

Fitger's claims that its name and label have been used exclusively since 1993 when the company was founded and purchased the rights. One wonders why Fitger's never sought registration of the name and/or logo once they started using it in commerce. One also wonders why Fitger's did not file oppositions against Fitger Company’s trademark applications when they were published for opposition.

Nonetheless, the fact that the judge was willing to grant a preliminary injunction does say a lot about the merits of Fitger’s case. It certainly gives Fitger's the upper hand at this stage of the litigation.

Tuesday, December 18, 2007

Firestone Files Trademark Infringement Lawsuit to stop Fire Stone Home Products

According to the Nashville Post (link here), BFS Brands, LLC ("BFS") – the holder of the portfolio of FIRESTONE trademarks – filed a trademark infringement lawsuit yesterday against Fire Stone Home Products (“FSHP”), a Bloomington, Minnesota based company that sells outdoor grills and fireplaces under the name Fire Stone.

BFS is seeking injunctive relief to stop FSHP from using the "Fire Stone" name, an order shutting down and transferring over FSHP's website, corrective advertising, FSHP's profits, and economic damages.

In addition to the lawsuit, the article states that BFS filed an objection to FSHP’s pending application filed February 19, 2007, for the mark FIRE STONE (for electric and gas grills, outdoor fireplaces, artificial gas logs, gas lights, and campfires). According to the USPTO’s August 22, 2007 office action, the application also still faces two Section 2(d) rejections– one for STONEFIRE for “surrounds and mantels for gas and electric fireplaces” and the other for FIRE ROCK for “fireplaces.”

Monday, December 17, 2007

Girls Gone Wild vs. Girls Gone Wine

The AP has a story today (link here) about a trademark dispute between the company that produces the famed (or infamous) Girls Gone Wild videos and a group of three Oklahoma businesswomen selling wine under the name "Girls Gone Wine." Another article also appears in The Oklahoman (link here).

On September 18, 2007, Shady Ladies, LLC filed a declaratory judgment action in the U.S. District Court for the Eastern District of Oklahoma against GGW Marketing, LLC and Mantra Films, Inc. See Shady Ladies, LLC v. GGW Marketing, LLC et al, Case No. 6:2007cv00293 (E. D. Okla.).

GGW Marketing, LLC holds three registrations for the GIRLS GONE WILD mark for prerecorded videotapes featuring adult entertainment, leather goods, and clothing. Mantra Films Inc. produces the Girls Gone Wild videos.

The women filed the declaratory judgment action after receiving a cease and desist letter from Mantra Films Inc. in July. The women received a registration for the mark GIRLS GONE WINE on February 27, 2007.

Joe Francis, the founder of “Girls Gone Wild” who is currently in jail in Reno, Nevada awaiting trial for tax-evasion and also facing charges in Florida over allegedly using minors in his movies, is quoted as saying "This is blatant trademark infringement. It just backs up everything that people have tried to do to me over the last few years to take advantage of me and we're tired of it."

Michael Burke, general counsel for Mantra Films, stated about the dispute: “It happens all the time. Mantra Films has spent several hundred million dollars over the last 10 years advertising its name endlessly on television to build up the image that 'Girls Gone Wild' is a fun, party environment and these women are taking a free ride on all that advertisement and name recognition.”

Vegas™Esq. Query: If this type of infringement happens all the time, then how come no opposition was filed when the GIRLS GONE WINE application was published for opposition?

This serves as a reminder as to why companies that really value their trademark portfolio should hire a reliable watch service to monitor any potentially infringing marks.

Friday, December 14, 2007

In-N-Out Burgers Files Trademark Infringement Lawsuit Against Mr. Bill's In and Out Burgers

I previously wrote about a trademark infringement lawsuit filed by In-N-Out Burgers against a local Las Vegas tire and auto repair shop named In & Out Tire & Auto, Inc. (link here). See In-N-Out Burgers v. In & Out Tire & Auto, Inc., Case No. 2:2007cv01556 (D. Nev.). I was a little critical of In-N-Out’s claims of confusion against a tire shop providing wholly unrelated services.

In-N-Out Burgers filed another trademark infringement lawsuit on Tuesday – but this time, based solely on the named defendant, I think I can side with In-N-Out Burgers.

On December 11, 2007, In-N-Out Burgers filed the lawsuit in the U.S. District Court for the District of New Mexico against Mr. Bill's In and Out Burgers, LMB Enterprises, LLC, William Robertson, and Does 1-9. See In-N-Out Burgers v. Mr. Bill's In and Out Burgers et al, Case No. 2:2007cv01249 (D. N.M.).

I would expect Mr. Bill (after exclaiming “Ohh Nooo!” upon hearing of the suit) to try and argue that the terms “In and Out” are merely descriptive of the manner and expediency in which his fast food take-out services are provided.

This time, however, it would seem that In-N-Out Burgers has the upper hand given the similarity in the marks (the only difference being the name “Bill” in front of Defendant’s mark) and the strong relatedness of the goods and services at issue (selling burgers).

Wednesday, December 12, 2007

California Milk Processor Board Threatens PETA with trademark infringement over "Got Pus?"

After years of allowing numerous parodies (and even some similar third party trademark registrations) of its famous "Got Milk?" trademark, the California Milk Processor Board ("CMPB") is threatening to sue People for the Ethical Treatment of Animals ("PETA") over its use of the phrase "Got pus? Milk does." on T-shirts, mugs, and other merchandise. See Associated Press article here.

In response to CMPB's cease and desist letter, PETA's lawyer wrote:

Your client cannot seriously contend that an appreciable number of consumers who see a T-shirt bearing the "Got Pus? Milk Does" slogan would be confused into thinking that your client is the source of the T-shirt, attempting to sell milk by letting the public know that when they drink milk they are also consuming pus.
So apparently, CMPB is ok with the myriad of "Got Milk?" ripoffs -- so long as you don't bash milk.

Monday, December 10, 2007

Trademark Infringement Lawsuits Take Center Stage in Las Vegas

The Las Vegas Business Press had an article on Saturday (link here) written by Valerie Miller entitled "Big trademark lawsuits become common in Las Vegas courts." The article describes the "surge" of trademark and copyright infringement lawsuits involving Las Vegas companies.

Most Las Vegas residents get their telephone service through Embarq, the reincarnation of Sprint (of course, as many will also tell you, a rose by any other name smells the same). What many do not know is that there is a second telephone company in Las Vegas -- Nevada Telephone Co. (website temporarily disabled, which gives you an idea of how successful business has been).

On October 29, 2007, Embarq Holdings Company, LLC filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against Robert A Jankovics, Nevada Utilities, Inc., Embarq and Embarq Central Telephone Company. See Embarq Holdings Company, LLC v. Jankovics et al, Case No. 2:2007cv01442 (D. Nev.). Jankovics is the manager of Nevada Utilities, Inc. which does business as Nevada Telephone Co.

At issue is a sign bearing the name "Embarq Marketing Division" with an airplane logo at Nevada Telephone’s headquarters. Embarq claims that the sign is confusingly similar to Embarq’s jet logo and that the proximity between the Embarq name to a sign for Nevada Telephone will cause consumer confusion. Embarq holds the trademark for the mark EMBARQ (for telecommunication services), which was registered on July 10, 2007 (date of first used claimed as May 17, 2006).
Jankovics says he has removed the sign and logo in response to Embarq’s demands, but does not believe he infringed upon Embarq’s trademarks. The sign was present because a company named Embarq Marketing Associates, which owns a business selling sexually oriented materials, rented space in the building now owned and occupied by Nevada Telephone and Jankovics let the tenant keep the sign up.

As for the other two entities that are defendants in the lawsuit, according to information on file with the Nevada Secretary of State’s office, Embarq Central Telephone Company was incorporated back on August 14, 2007. Jankovics is listed both as the company’s registered agent and secretary. On the same day, Jankovics filed a Nevada service mark application for the mark EMBARQ CENTRAL TELEPHONE COMPANY.

Jankovics claims he was trying to help out Embarq by incorporating the Embarq Central Telephone Company and applying for the service mark for the same name, which Embarq declined to purchase despite Jankovics’ offer to sell it for one dollar. Central Telephone Company, the former Sprint operating company, has filed fictitious firm names in Clark County to do business as "Embarq."

Finally, with respect to the defendant Embarq (in case you were asking why Embarq is suing itself), on June 13, 2006, Jankovics formed a corporation named EMBARQ, which remains active and where Jankovics is named as President, Secretary, Treasurer, and Director of the Company. [Footnote: Nevada law does not require corporations to use additional word or words such as "Incorporated," "Limited," "Inc.," "Ltd.," "Company," "Co.," "Corporation," "Corp.," or other word which identify it as not being a natural person so long as the name does not appear to be that of a natural person and containing a given name or initials.]

If you do a search on the Nevada Secretary of State’s website (link here) for the officer name ROBERT JANKOVICS, you can see that Jankovics has incorporated or organized several Nevada entities under various names relating to phone service across the valley. You can also view the companies for which he (or his wife, Anita) serves as resident agent by clicking here and here and here.
I personally like the name of one of Jankovics’ other companies (which was dissolved on April 13, 2007) – Disembarq. Very clever.

Blue Man Group
The company behind the Blue Man Group is suing some people behind a show that is allegedly confusingly similar to that of the Blue Man Group’s show.

On November 26, 2007, Blue Man Productions Inc.("BMPI") filed a copyright infringement lawsuit in the U.S. District Court for the District of Nevada against Uptowne Productions, Inc., Kraft-E Events, LLC, Kevin Kraft, and Larry C. Vladetic. See Blue Man Productions, Inc. v. Uptowne Productions, Inc. et al, Case No. 2:2007cv01566 (D. Nev.). Vladetic is an officer of Uptowne and manager of Kraft-E.

BMPI’s lawsuit alleges that the defendants produce a live theatrical show that incorporates the character and other intellectual property of BMPI. BMPI sent a cease and desist letter to the defendants last April, but apparently the defendants continue to produce the show. Vladetic claims that he is only running a "booking agency," which booked only one show before receiving the cease and desist letter.

BMPI owns several registrations for the mark BLUE MAN GROUP, including for entertainment services in the nature of live musical and theatrical performances which was registered May 15, 2001).

World Market Center
Most Las Vegas residents and most furniture businesses nationwide know about the World Market Center – the behemoth group of buildings located near Downtown Las Vegas which are occupied only two times a year for one week each time for one of the largest furniture shows in the country.

On February 7, 2007, Cost Plus Management Services, Inc. ("Cost Plus") filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against World Market Center Venture, LLC ("WMC"). See Cost Plus Management Services, Inc. et al v. World Market Center Venture, LLC, Case No. 2:2007cv00156 (D. Nev.).

At issue is the name "world market" by WMC. Cost Plus holds federal registrations for the mark WORLD MARKET for, among others goods and services, furniture and retail store services featuring general merchandise ("market" disclaimed"). Cost Plus alleges that WMC’s use of the "world market" name and logo is likely to cause confusion with Cost Plus’ registered marks and has damaged Cost Plus’ business, reputation, and goodwill. Cost Plus also holds several registrations for the mark COST PLUS for retail furniture stores services and retail store services featuring general merchandise (here and here).

WMC is also facing another trademark challenge at the USPTO. WMC filed a trademark application for the mark WORLD MARKET CENTER on September 1, 2004 for four classes of services including conducting trade exhibitions, leasing trade exhibition space, construction of trade showroom facilities, and providing general-purpose facilities for trade shows. The mark was published for opposition on January 4, 2006; however, on May 30, 2006, the World Trade Center Association (owner of the WORLD TRADE CENTER mark) filed an opposition. See World Trade Centers Association Inc. v. World Market Center Venture, LLC, Opposition No. 91171390 (T.T.A.B). The action is currently suspended until March 31, 2008, while the parties apparently pursue negotiations.

We Must Never Forget.

Vegas™Esq Comments:
Since Ms. Miller did not seek out my comments for her story, I shall provide them here:

Embarq – Embarq has the upper hand here although I doubt the company will get the $75,000,000 that the Justia database indicates Embarq is seeking. While it may not be able to stop Jankovics from working near some business with the name Embarq, he can be stopped from taking any actions that associate his telephone services with the name Embarq. I would imagine that Embarq will be keeping a close watch on Mr. Jankovics’ companies containing the name Embarq.

Blue Man Group – Without more information about the allegedly infringing production, I am not in a position to opine. However, BMG is a fairly popular show nationwide, so if the other show involves characters dressed in black with a head covered in blue makeup and engaging in the type of actions characteristic of BMG (lighted steel drums with colored pain flying while drumming, making music with industrial pipes, shooting marshmallows into the audience, draping the entire audience in paper – I’ve seen the show and it is interesting), I tend to think that BMG has the upper hand.

World Market Center – this is the fun one to watch. Some commentators (including one attorney quoted in the article) seem to favor Cost Plus. However, on the issue of trademark infringement, I actually tend to believe that World Market has the upper hand because of the type of services involved and the nature of the consumers. World Market Center is a trade show venue – it does not compete with Cost Plus, which is a retail store. Consumers who buy at Cost Plus are not the same consumers that would attend the World Market Center. And to the extent that they do, the patrons of the World Market Center are well aware of the differences between the two and would not be confused. In addition, as the article notes, most people refer to Cost Plus World Market as just "Cost Plus" (I know that I do). The "World Market" part of the mark is a little on the descriptive side, and therefore, a stronger likelihood of confusion must be demonstrated to show infringement.

Of course, Cost Plus is also likely to argue likelihood of dilution. Nonetheless, while Cost Plus’ long use of the mark WORLD MARKET gives it a basis for arguing that its mark is famous, I tend to question whether such famous mark has the requisite "distinctiveness" for Cost Plus to maintain a dilution action under the 15 U.S.C. § 1125(c). Even though a mark may be famous (i.e., widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner), that alone may not be enough to make such mark distinctive (where distinctiveness refers to the ability of the famous mark to uniquely identify a single source and thus maintain its selling power).

Friday, December 7, 2007

Former Arizona Cardinals coach seeks to register “They are who we thought they were”

The Wall Street Journal’s Law Blog had a post today (link here) regarding a trademark application filed by former Arizona Cardinals coach Dennis Green. During a post-game press conference on Oct. 16, 2006, following a 20 point lead loss over the Chicago Bears in under 20 minutes, Green apparently had a meltdown (which you can view for yourself courtesy of YouTube) where he kept saying over and over about the Bears –“They are who we thought they were.” The phrase, reminiscent of any one of the many great Yogiisms, has apparently become somewhat of a joke among sports commentators and even made its way into a Coors Light commercial.

But Green is now taking lemons and turning them into lemonade by doing what so many others have done when they come to be associated with a phrase that captures the public’s attention – seeking to register the mark with the United State Patent and Trademark Office (“USPTO”).

On November 28, 2007, Green filed a Section 1(b) intent-to-use application for the mark THEY ARE WHO WE THOUGHT THEY WERE for the following goods and services: 1) Hats, caps, baseball caps, knitted caps, golf caps, sports jerseys, t-shirts, polo shirts, sport shirts, sweatshirts, golf shirts, sweat bands, sweat pants, jogging pants; and 2) Educational and motivational public speaking services.

Because the basis of the application is intent-to-use, the application will likely get to the publication phase. However, ultimate registration will depend on the specimens of use submitted and whether the mark is truly being used as a source identifier.

As so often happens with trademark applications seeking to register a slogan or phrase to put on clothing items, the USPTO may refuse registration on the grounds that the mark is merely ornamentation that consumers are likely to perceive as conveying a message rather than indicating the source of the goods or to distinguish the goods from those of others. See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981).

I previously wrote about the trademark application for the phrase COWGIRLICIOUS (link here) where registration was refused because the mark was used in the submitted specimen was merely ornamental. In that case, the applicant submitted a picture of T-shirt with the word “COWGIRLICIOUS” in the middle of the shirt. Such use was found to be more of a slogan and by its size and location in the middle of the shirt would not be perceived as a source identifier or as a trademark which identifies applicant’s goods and distinguishes such goods from those of others. The larger the display of the mark relative to the size of the goods, the more likely that consumers will not view it as a mark. In addition, the location of where the mark is fixed on the goods is a consideration of how it will be viewed by the public. Where consumers are used to seeing a trademark in certain locations on clothing (i.e. collar label for shirts, above or on the rear pocket for jeans), consumers are less likely to perceive the mark as a source indicator when such mark is placed in a location that is less often associated with a brand name (i.e. the breast area of a shirt).

In order to overcome such an ornamental rejection, an applicant must --a) argue and submit evidence showing that the mark has become distinctive of applicant’s goods (Section 2(f) acquired distinctiveness argument);b) submit evidence that the mark would be recognized by the public as a trademark through applicant’s use of the mark with goods or services other than those identified in the application (the mark is an indicator of secondary source or sponsorship);c) amend the application to seek registration on the Supplemental Register; ord) submit a new specimen showing non-ornamental use.

For clothing, the PTO usually accepts use of the mark on clothing tags. Such use was accepted for Paris Hilton’s THAT’S HOT and for Dorothy Tovar’s WHAT HAPPENS IN VEGAS STAYS IN VEGAS (before it was cancelled).

As for Green’s use of the phrase as a service mark, the PTO will still require the mark to be used in a manner that would be perceived by purchasers as identifying and distinguishing the source of the services recited in the application. The PTO may register such a service mark only to the extent that Green uses the phrase to advertise his public speaking services in a way that makes a commercial impression separate from that of the other elements of advertising material upon which it was used, such that the designation would be recognized by prospective customers as a source identifier.

Nonetheless, if the PTO will not allow registration on the Principal Register, Green may wish to opt for registration on the Supplemental Register (see previous blog entry here regarding the benefits of registration on the Supplemental Register). Such registration will at least prevent anyone else from registering a similar mark with the USPTO.

But my favorite “phrase-du-jour” trademark application filed this year is probably “DON’T TAZE ME BRO!” I don’t know if the applicant, Franchise Institute, Inc., has any connection to Andrew Meyer, the student who became famous when he exclaimed those words during a John Kerry speech at the University of Florida, or to Bob McCarty, who already has a thriving online business selling shirts with the slogan, but I would suspect the application to face a similar ornamental challenge.

Thursday, December 6, 2007

Stanford University to battle Hogwarts School in Harry Potter Lexicon Copyright and Trademark Dispute

I previously posted (link here) about the lawsuit filed by J.K. Rowling and Warner Brothers against RDR Books over RDR’s plans to publish a 400 page book entitled the “Harry Potter Lexicon” which is apparently just a print version of the free-of-charge Harry Potter Lexicon fan website website ( See Warner Bros. Entertainment Inc. et al v. RDR Books et al, Case No. 1:2007-cv-09667 (S.D.N.Y.).

A temporary restraining order was put into place pending the court’s decision on Rowling’s motion for preliminary injunction. The hearing for that motion is scheduled for February 6, 2008.

Now comes news that RDR has a powerful new ally to aid in its battle against Rowling and Warner Brothers – a group of intellectual property lawyers at Stanford Law School. See news stories here and here.

The Fair Use Project at Stanford University’s Center for Internet and Society announced on Tuesday that it would help defend RDR books in the lawsuit. Fair Use Project executive director Anthony Falzone said that the book RDR wants to publish is protected by long-standing U.S. law giving people "the right to create reference guides that discuss literary works, comment on them and make them more accessible".

So how will the Stanford Center for Internet and Society match up against Hogwarts School of Witchcraft and Wizardry? My money is on the school that relies upon law rather than magic.

Tuesday, December 4, 2007

University of Wisconsin Files Trademark Infringement Lawsuit Against Washburn University Over “W”

I previously wrote about the efforts by Arizona State University to stop other schools from using its registered trademark SUN DEVILS (blog post here). Now comes news of another university going after a school for its use of the letter “W.”

On December 3, 2007, the Board of Regents of the University of Wisconsin System (the “University”) filed a trademark infringement lawsuit in the U.S. District Court for the Western District of Wisconsin against Washburn University in Topeka, Kansas (“Washburn”) . See Board of Regents of the University of Wisconsin System v. Washburn University, Case No. 3:2007cv00672 (W.D. Wis.). News stories about the lawsuit can be found here and here.

The complaint alleges that Washburn’s W logo (pictured above) infringes upon the University of Wisconsin at Madison’s (“UW-Madison’s”) “W” logo (pictured below).

The University holds two registrations for the above “W” logo – one for clothing and another for education services (and color is not claimed as a feature of the mark). Both marks were registered in 1996, but first use is commerce is claimed back to September 1990. The University also has several registrations and pending applications for marks incorporating some variation of the “W” logo – most of which include UW-Madison’s official badger mascot, Buckingham U. Badger (“Bucky”).


According to suit, representatives from UW-Madison have sent numerous cease and desist letters to Washburn over the past six years. UW-Madison licenses the use of its logo on clothing, glassware and other UW-Madison souvenirs and claims that Washburn’s use of its own logo on similar items may cause consumer confusion and cause harm to UW-Madison’s goodwill.

In addition to injunctive relief, the lawsuit also seeks profits derived from Washburn’s use of the infringing mark, destruction of all merchandise displaying the infringing mark, and punitive damages.

The University appears to have recently strengthened its efforts to police and enforce its trademark rights to its “W” logo. Back in March of this year, the Marquette Tribune ran an article (link here) about a cease and desist letter sent by the University to Waukee High School in Iowa because of the high school’s use of a similar looking “W” logo. The dispute ended amicably with the high school changing its logo (see below).

Monday, December 3, 2007

“Second Life” trademark infringement lawsuit ends with First Life Default Judgment (link here) reported on the default judgment entered in favor of Eros, LLC against defendant Robert Leatherwood. See Eros, LLC v. Robert Leatherwood and John Does 1-10, Case No. 8:2007cv01158 (M.D. Fla.). A copy of the default judgment can be downloaded here (courtesy of

A November 15th story by “Second Life” Reuters (link here) provides a good overview of the events surrounding the case and leading up to the default judgment. In July, Eros filed suit against then unknown Leatherwood for selling illegal copies of Eros’ product, the SexGen bed (a piece of furniture with special embedded animations that enable Second Life players to create an adult film with their avatars). Eros also has a pending Section 1(a) trademark application for the mark SEXGEN (the current description of “Scripted animation system utilizing a defined menu to actuate avatars within a virtual world accessed through a 3-dimensional virtual platform” has been rejected as vague).

A four month investigation of the IP addresses of the avatar accused of the trademark infringement (named Volkov Catteneo) uncovered Robert Leatherwood. Leatherwood denied being Catteneo, but nonetheless failed to respond to Eros’ lawsuit. Eros filed its motion for default judgment soonafter.

With the default judgment entered, Eros can now seek damages against Leatherwood. Of course, collecting such a judgment may be difficult, given that Leatherwood is apparently an unemployed high-school dropout living with his family.