Friday, May 30, 2008

Trademark Battle Between the Wolfgangs

BusinessWeek ran an article today (link here) in the Small Biz section of its website written by Stacy Perman entitled “Wolfgang Puck vs. Wolfgang Zeiener” discussing the recent trademark infringement lawsuit filed by Wolfgang Puck in Los Angeles Superior Court against Wolfgang Zwiener, the owner of “Wolfgang’s Steakhouse by Wolfgang Zwiener.”

I almost wrote a blog posting about this dispute yesterday, but felt that the dispute (first publicized on or about May 14, 2008) had probably already run its course – at least in the trademark law blogosphere where bloggers strive to post the very latest developments in trademark law and trademark lawsuits and where two weeks is the equivalent of two months in blogger reporting time.

So why do I now mention Ms. Perman’s article about the dispute? Because not only does the article provide a succinct overview of the lawsuit and the background leading up to its filing, but it also happens to contain a brief mention of yours truly – providing some comments about the trademark issues that small businesses often overlook or disregard when choosing a mark for their products and services.

Tuesday, May 27, 2008

U.S. Supreme Court denies Rosenruist-Gestao Petition for Writ of Certiorari

The U.S. Supreme today denied the petition for writ of certiorari filed by Rosenruist-Gestao E Servicos LDA in its appeal of the Fourth Circuit’s decision holding that a foreign corporation (Rosenruist-Gestao) can be compelled to answer a Rule 30(b)(6) deposition subpoena issued pursuant to 35 U.S.C. §24 arising out of a Trademark Trial and Appeal Board ("TTAB")opposition filed by Virgin Enterprises Limited opposing Rosenruist-Gestao’s intent-to-use trademark application for the mark VIRGIN GORDA. See Rosenruist-Gestao E Servicos LDA, fka Rosenruist-Gestao E Servicos Sociedade Unipessoal LDA v. Virgin Enterprises Limited, 2008 U.S. LEXIS 4416, No. 07-1214 (U.S. May 27, 2008); see also Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 511 F.3d 437 (4th Cir. 2007); Rosenruist-Gestao E Servicos Sociedade Unipessoal LDA v. Virgin Enterprises Limited, Opposition No. 91161535 (TTAB Filed July 29, 2004).

Previous blog posts on the dispute can be found here and here. Summaries of the Fourth Circuit’s decision can be found on and The TTABlog®.

So will this decision have the far-reaching impact foreshadowed by Fourth Circuit Judge Wilkinson(the lone dissenter in the Fourth Circuit’s decision)? Can the Fourth Circuit’s decision even be enforced by the district court? Only time will tell.

For now, attorneys involved in trademark disputes with a foreign applicant at the TTAB can have a subpoena issued by the U.S. District Court for the Eastern District of Virginia compelling the foreign company to produce a witness in response to a Rule 30(b)(6) deposition notice.

Friday, May 23, 2008

District Court finds “Victor’s Little Secret” likely to tarnish, but not blur, the famous VICTORIA’S SECRET mark under the TDRA

For trademark practitioners, the words “Victor’s Little Secret” mean so much. This particular mark (along with the earlier version “Victor’s Secret”), used by Victor by Victor and Cathy Moseley over eight years ago as the name of their Elizabethtown, Kentucky adult retail store, led to a trademark battle with Victoria’s Secret (“V Secret”) that went all the way up to the U.S. Supreme Court in 2003 (Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003)) and led Congress in 2006 to overrule the Supreme Court’s decision that federal dilution law at the time (the Federal Trademark Dilution Act of 1995 (“FTDA”)) required evidence of actual dilution by enacting the Trademark Dilution Revision Act of 2006 (“TDRA”), Pub.L.No. 109-312, 120 Stat. 1730 (2006)(now codified at 15 U.S.C. § 1125(c)), effective October 6, 2006, and thereby enacting a likelihood of dilution standard for claims of dilution under federal law.

So what ever happened to the dispute after the Supreme Court victory for the Moseleys? Well, like so much litigation, the dispute continued.

After the Supreme Court entered its mandate on April 3, 2003, the case was sent back to the Sixth Circuit Court of Appeals. On April 9, 2003, the Moseleys filed a motion in the Court of Appeals to vacate the injunction that had been put into place and V Secret filed its response on April 25, 2003. The Sixth Circuit, for reasons unclear, sat on the case for over four years without any action. Of course, during those four years, the TDRA had been enacted. On July 26, 2007, the Sixth Circuit finally remanded the case to the district court for further proceedings consistent with the Supreme Court’s decision.

On May 21, 2008, Judge Charles R. Simpson III of the U.S. District Court for the Western District of Kentucky issued a memorandum opinion granting V Secret’s summary judgment and request for a permanent injunction against the Moseleys, whose request for summary judgment was denied. See V Secret Catalogue, Inc., et al. v. Victor Moseley and Cathy Moseley, Case No. 98-cv-395 (W.D. Ky. May 21, 2008).

After providing a great summary of the events leading up the U.S. Supreme Court decision, the court first determined that the “actual dilution” standard is no longer the law of the case. The court also addressed the issue of retroactivity, rejectingthe Moseleys’ argument that the FTDA applied to claims pending prior to the effective date of the TDRA, noting that all claims for monetary relief had been withdrawn by V Secret and that V Secret now only seeks prospective injunctive relief. The court further noted that the court’s prior conclusions that the Victoria’s Secret mark was “famous” and “distinctive” were not part of the Supreme Court appeal, which reversed based only on the fact that the court used the “likelihood of dilution” rather than an “actual dilution” standard and that there was no evidence of actual dilution of the Victoria’s Secret mark. Both parties also apparently sought to maintain the findings that the VICTORIA’S SECRET mark is “famous” and “distinctive” as the law of the case..

The court rejected the Moseleys’ position that the Supreme Court’s reversal was based on a finding that there was “no evidence of dilution” because the Supreme Court focused only on evidence of actual dilution and did not directly address the lower courts’ determination of a likelihood of dilution. The court added that “the findings from both courts under the FTDA are so much flotsam and jetsam, having been jettisoned from the ship of the FTDA now sunk in the sea of new dilution law.” The court also rejected V Secret’s insistence that the court’s previous findings be adopted because the TDRA’s elements of likelihood of dilution are nearly identical to those of the FTDA.

Instead, the court evaluated V Secret’s entitlement to injunctive relief under the new TDRA likelihood of dilution standard – eight years after the Moseleys ceased using the name, but finding a case or controversy nonetheless existing with respect to V Secret’s entitlement to injunctive relief because the Moseleys were seeking to lift the prior injunction already in place.

In finding that the VICTORIA’S SECRET was a famous mark under the TDRA, the court noted that the Moseleys have not challenged the conclusion that the VICTORIA’S SECRET mark qualifies as a famous mark and noted that V Secret had provided sufficient evidence nonetheless to qualify as a famous mark under the various factors set forth in the TDRA for determining whether the mark possesses the requisite degree of recognition to be considered famous. As for the distinctiveness of the VICTORIA’S SECRET mark, the Moseleys also did not challenge the conclusion that the VICTORIA’S SECRET mark is distinctive. As for use of the mark after V Secret’s mark became famous, there was no question that the Moseleys’ use of the “Victor’s Little Secret” mark in 1998 was long after Victoria’s Secret’s fame had been established.

The court first addressed the first kind of dilution -- likelihood of dilution by blurring – noting that the TDRA defines “dilution by blurring” as an association arising from the similarity between a mark and a famous mark that impairs the distinctiveness of the famous mark. See 15 U.S.C. § 1125(c)(2)(B). “Dilution by blurring occurs when consumers mistakenly associate a famous mark with goods and services of a junior mark, thereby diluting the power of the senior mark to identify and distinguish associated goods and services.” Ringling Bros. - Barnum & Bailey Combined Shows, Inc. v. Utah Division of Travel Dev., 955 F.Supp. 605, 615 (E.D.Va. 1997), citing, Mead Data Cent., Inc. v. Toyota Motor Sales U.S.A., Inc., 875 F.2d 1026, 1031 (2nd Cir. 1989)).

The court then went through an analysis of the five factors set forth in the TDRA for determining the likelihood of dilution by blurring. Regarding the degree of similarity between the marks, the court found the two marks to be substantially similar (only two letters difference and the “Little” was to little to make a difference). As for distinctiveness, the court noted that the TDRA had not changed with respect to this element – and that the court and the Sixth Circuit had both concluded that the VICTORIA’S SECRET mark is distinctive in that it is “arbitrary and fanciful.” Regarding V Secret’s substantially exclusive use of the mark, the Moseleys did not dispute V Secret’s arguments of substantially exclusive use. As for degree of consumer recognition of the VICTORIA’S SECRET mark, the court found that the VICTORIA’S SECRET mark has a high level of consumer recognition. As for the Moseleys’ intent to associate with a famous mark, the court adopted its previous analysis and conclusion that the Moseleys intended to create an association with the VICTORIA’S SECRET mark (finding not credible the explanation offered by the Moseleys that they had never seen a Victoria’s Secret catalog or a Victoria’s Secret advertisement prior to opening their store).

In analyzing “actual association,” the court recounted the testimony of the army colonel who first saw an advertisement for the grand opening of the Moseleys’ store and subsequently sent this advertisement to V Secret. The Supreme Court had noted that while the colonel had made a mental association between the Moseleys’ store and the VICTORIA’S SECRET mark, “he was not actually misled as to the ownership of the Moseleys’ store, nor was his esteem of V Secret’s business diminished. Rather, he was offended that the Moseleys would attempt to use a variant of the VICTORIA’S SECRET mark in such a fashion.” The court, while acknowledging its weakness, accepted this one testimonial association as evidence of actual association.

However, the facts behind this actual association ultimately leads the court to conclude that there is no likelihood of dilution by blurring. The court stated:

The evidence, which is essentially limited to the experience of the offended army colonel, militates against a finding that the distinctiveness of the VICTORIA’S SECRET mark would likely be impaired by the use of the “Victor’s Secret” or “Victor’s Little Secret” marks. The evidence in the case established that a consumer, the army colonel, readily associated the Moseleys’ mark with the VICTORIA’S SECRET mark, but did not link the store to the Victoria’s Secret brand. There was no question in his mind that the Moseleys’ offerings of intimate lingerie, sex toys, and adult videos were not V Secret merchandise. The choice of name and presentation by the Moseleys being just slightly different from the VICTORIA’S SECRET mark, conjured the association with the famous mark, but fell short of blurring its distinctiveness in this instance.
The court noted that the offended colonel wrote to V Secret not to tell V Secret to stop selling adult merchandise, but rather to alert V Secret that its mark was being associated with a retail store selling such merchandise in derogation of the Victoria’s Secret name. As such, the court found that the evidence of record reflected that “the distinctiveness of the VICTORIA’S SECRET mark was not blurred, at least in the instance of one consumer confronted with the use of the accused mark” and concluded that V Secret had not established a likelihood of dilution by blurring. The court did note that V Secret did not seek to further develop any evidence of dilution on remand.

However, while the colonel’s testimony may have worked against a finding of likelihood of dilution by blurring, such evidence supported a finding of likelihood of dilution by tarnishment:

The army colonel’s offended reaction to the use of “Victor’s Secret,” what he clearly believed to be a bastardization of the VICTORIA’S SECRET mark, for the promotion of “unwholesome, tawdry merchandise,” suggests the likelihood that the reputation and standing of the VICTORIA’S SECRET mark would be tarnished. In the words of the Deere & Co. case, the reputation of the famous mark would be “reduced” in the eyes of consumers as “a wholesome identifier” of the Victoria’s Secret brand Id. V Secret has stated that it scrupulously avoids sexually explicit goods while cultivating a “sexy and playful” image. The line between “sexy and playful” and sexually explicit in the world of women’s lingerie purveyors is one which V Secret seeks to maintain in order to preserve its image as a “well-respected retailer of high-quality women’s lingerie.”
The court found that the Moseleys’ use of “Victor’s Secret” and later “Victor’s Little Secret” in connection with the sale of lingerie and other adult merchandise tarnishes the reputation of the VICTORIA’S SECRET mark, and concluded that V Secret was entitled to injunctive relief based on a showing of likelihood of dilution by tarnishment.

Wednesday, May 21, 2008

Computer Company Sues Apple and CBS over MIGHTY MOUSE computer mouse

On March 20, 2008, Man & Machine, Inc. (“M&M”), a Maryland-based computer accessories provider, filed a trademark infringement lawsuit Apple, Inc. (“Apple”), CBS Corporation, and CBS Operations Inc. (“CBS Operations”) over the word mark MIGHTY MOUSE to identify a computer mouse. See Man & Machine, Inc. v. Apple, Inc. et al, Case No. 08-cv-01311 (D. Md. May 20, 2008). A copy of the complaint can be downloaded here.

According to the complaint, M&M began selling a waterproof, chemical-resistant computer mouse using the mark MIGHTY MOUSE on or before March 16, 2004.

M&M's MIGHTY MOUSE computer mouse

On August 2, 2005, Apple announced and began selling a new computer mouse with multiple buttons (breaking a long-standing Apple tradition of computer mice with only a single button) under the name MIGHTY MOUSE (see also Wikipedia write-up on Apple’s Mighty Mouse).

Apple's MIGHTY MOUSE computer mouse

CBS Operations is the owner of several registrations directed to MIGHTY MOUSE including for watches and tee shirts; dolls, jigsaw puzzles, and plush toys; and toy vehicles. The oldest registration for the MIGHTY MOUSE trademark (for film series of animated cartoons for motion pictures and television, for comic magazines and color books, and toy puzzles) expired in July 1999 when the registration was not renewed. CBS Operations also still holds a design mark registration for the famed “Mighty Mouse” cartoon character – the well-recognized cartoon mouse with the red cape and yellow tights.

The Real Mighty Mouse

At some point, Apple entered into a license agreement with CBS Operations to use the phrase MIGHTY MOUSE on its computer mice. It is not clear whether Apple recognized from the outset that CBS Operations’ had trademark rights to the MIGHTY MOUSE mark (albeit not necessarily for computer mice) or whether CBS Operations staked its claim against Apple soon after sales began.

On July 9, 2007, CBS Operations filed a §1(a) use-in-commerce trademark application to register the MIGHTY MOUSE mark for computer cursor control devices, namely, computer mouse (claiming a first use in commerce date of August 2, 2005). For reasons not entirely clear, the application was initially based on a claim of acquired distinctiveness under §2(f), for which CBS claimed the following: The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s). 1533890.” The registration cited by CBS Operations is for the design mark of the Mighty Mouse cartoon character (pictured above). The goods for which such design mark remains active are “film series of animated cartoons for motion pictures and television; sunglasses; watches; tee shirts; and sweatshirts.” However, an Examiner’s Amendment was later entered that removed the Section 2(f) claim; instead, CBS Operations disclaimed the word MOUSE. The mark was published for opposition on December 18, 2007.

Someone must have notified M&M about CBS Operations’ pending application because that same day (December 18, 2007), M&M filed a §1(a) use-in-commerce trademark application to register the MIGHTY MOUSE mark for computer cursor control devices, namely, computer mice (claiming a first use in commerce date of March 16, 2004). This mark is scheduled to be published for opposition May 27, 2008.

In addition, on December 26, 2007, M&M filed an opposition against CBS Operations’ application. See Man & Machine, Inc. v. CBS Operations Inc., Opposition No. 91181500 (TTAB Dec. 26, 2007). A copy of the opposition can be downloaded here.

In M&M’s current complaint, M&M claims trademark infringement and unfair competitions under §43(a) of the Lanham Act (15 U.S.C. §1125(a)) against Apple for its use of the MIGHTY MOUSE mark in connection with computer mice. In addition, anticipating an obvious trademark dilution counterclaim by CBS Operations under §43(c) of the Lanham Act (15 U.S.C. §1125(c)), M&M also seeks a declaratory judgment of non-dilution against CBS Corporation and CBS Operations.

While the basis for M&M’s contention that its use of the MIGHTY MOUSE name does not dilute CBS Operations’ MIGHTY MOUSE mark is not entirely clear from the complaint, a review of M&M’s opposition provides some insight. In opposing CBS Operations’ MIGHTY MOUSE application, M&M cites to a TTAB opposition filed by Viacom International, Inc. (CBS Operations’ predecessor-in-interest) back in 1995 against a company that sought to register the mark MY-T-MOUSE THE SOFTWARE THAT MAKES YOUR MOUSE A MOUSE THAT TYPES! (and Design). See Viacom International, Inc. v. Komm, et al., Opposition No. 91098994 (TTAB Feb. 5, 1998).

In that decision, the Board found no likelihood of confusion between the Applicant’s mark and Viacom’s MIGHTY MOUSE mark. In analyzing one of the du Pont likelihood of confusion factors (fame of the mark), the Board stated the following:

However, MIGHTY MOUSE is not a famous mark in the legal sense that other marks have been found to be famous. The evidence shows that MIGHTY MOUSE achieved its fame as a cartoon character of the 1940s, '50s and early '60s. Opposer has provided little evidence of the extent of the use of the mark in the United States since that time. For example, although there was testimony that the mark was used on toy puzzles and vitamins, there was no evidence as to the amount of sales of these products. Ms. Petrasek gave only the copyright date shown on the labels of the packaging. Nor did opposer provide evidence of how often, or where, the MIGHTY MOUSE cartoon programs were shown when they were in syndication. As opposer itself has recognized, MIGHTY MOUSE is one of its nostalgic television properties, and its appeal is to adults because it is they who remember the first television series.

M&M will apparently be relying on this determination by the Board to support a finding that CBS Operation’s MIGHTY MOUSE mark is not famous for dilution purposes, and therefore, M&M’s use of the mark for its computer mice does not dilute CBS Operations’ “famous” MIGHTY MOUSE mark.

In M&M’s opposition, M&M also attacks CBS Operations’ application on the basis of misstatements to the PTO – specifically CBS Operations’ §2(f) claim that its MIGHTY MOUSE mark (for computer mice) has become distinctive of such goods as evidence by CBS Operations’ ownership of the not-so-same mark for goods that are not related to computer mice. However, given that this claim of acquired distinctiveness was deleted from the application before publication, it is not likely to help M&M with its opposition.

M&M seeks injunctive relief to stop Apple and CBS Operations. M&M specifically notes that Apple, through its monstrous marketing efforts, has made it virtually impossible for M&M to market its MIGHTY MOUSE mark online (any search engine search for MIGHTY MOUSE will find Apple’s mouse, but not M&M’s mouse).

Vegas™Esq. Comments:
Looks like M&M, anticipating an opposition by CBS Operations against its own pending application, decided to be proactive and file a lawsuit instead – possibly bringing the matter into a more convenient forum.

This case illustrates once again the importance of businesses applying for federal trademark registration as early as possible. Had M&M filed an application for the mark back in 2004 when it first began selling computer mice under the mark, it may have been in a better position with respect to its MIGHTY MOUSE computer mouse. Either M&M would have acquired a federal registration and would have the exclusive right to use the mark nationwide or CBS Operations would have filed an opposition to the M&M's application to register the mark and the parties would be battling it out now – in either case, Apple would have been put on notice of the conflict and may have been more inclined not to use the name in the first place. Instead, M&M did not file any application until CBS Operations own application (which also, in my opinion, was not filed in a timely manner) was published for opposition.

As it stands, M&M will have to rely upon its common law rights to the name, which will entail a showing by M&M of its market penetration with respect to its MIGHTY MOUSE mark before Apple began selling a mouse with the same name (an uphill battle given that M&M acknowledges that it has only sold tens of thousands of its computer mice).

Monday, May 19, 2008

Is a trademark battle brewing over KNUT?

There is an interesting trademark battle possibly brewing for fans of the famed polar bear cub KNUT (pictured above).

Knut was born at the Berlin Zoo in December 2006. After Knut was born, Knut’s mother rejected and abandoned the newly born cub. The Berlin Zoo had not had a polar bear cub survive past infancy in more than 30 years, so zookeepers opted to raise him. Knut’s story garnered international attention, however, after a German tabloid in March 2007 quoted an animal rights activist saying that Knut should have been killed rather than being raised like a domestic pet. This led to an outpouring of support in favor of keeping Knut alive, including a letter campaign to the Berlin Zoo and protests outside the zoo by children.

The Berlin zoo unveiled Knut to the public on March 23, 2007. That same day, the Berlin Zoo filed two German trademark applications for the mark KNUT for various goods (see Registration No. 30720102.3, registered May 29, 2007 and published June 29, 2007; and Registration No. 30720189.9, registered July 24, 2007 and published August 24, 2007) (click here for search engine to search German trademark filings). The branding of Knut led to a doubling of the Berlin Zoo’s stock on the German stock exchange.

Soonafter, in the United States, an enterprising company and an individual with no apparent connection whatsoever to the Berlin Zoo decided to file federal trademark applications on the name KNUT.

One application was a Section 1(b) intent-to-use application filed May 2, 2007 by an individual named Joseph Dominick Castano for the mark KNUT THE POLAR BEAR. The description of goods was the following: “Motion picture films about Knut the Polar Bear; Digital materials, namely, DVD featuring Knut the Polar Bear; Downloadable MP3 files, MP3 recordings, online discussion boards, web casts, pod casts featuring music, audio books and news broadcasts.” Not surprisingly, the U.S. Patent and Trademark Office (“PTO”) refused registration under Section 2(e)(1) on the grounds that the mark was merely descriptive: “Here, the mark ‘KNUT THE POLAR BEAR’ is descriptive of applicant’s goods because the goods presumably feature the famous Berlin Zoo polar bear, Knut.” The applicant did not respond to the office action and the application went abandoned.

However, the more interesting application is the one that was filed even earlier. On April 9, 2007, a Section 1(b) intent-to-use application was filed by a California corporation named Transpo Products for the mark KNUT for “Stuffed toy bears; Teddy bears”. After being published for opposition on September 19, 2007, a notice of allowance was issued January 1, 2008. The applicant’s first specimen was rejected by the PTO because it was a catalog page advertising the Knut teddy bear (promoting the “Official U.S. Knut polar bear stuffed toy animal”), but did not show the necessary ordering information. The second specimens, submitted March 18, 2008, were two pictures of what looks like a panda bear (one with a stitched-on label reading “KNUT” and the second with a price tag that reads “KNUT”). The specimens apparently satisfied the PTO, and the mark was registered last Monday, May 13, 2008.

Trasnpos's first specimen of use

Transpo's second specimen of use

What makes this particular registration interesting is that the Berlin Zoo, having branded the name KNUT in Germany, announced on May 1, 2007, that New York-based Turtle Pond Publications LLC (“Turtle Pond”) had acquired the world-wide publishing rights to Knut. Apparently, the deal may have been worked out a little sooner because on April 16, 2007, Turtle Pond filed with the USPTO five Section 1(b) intent-to-use trademark applications in its name directed to the KNUT mark including for prerecorded videotapes, electronic publications, motion picture films and computer games; children’s books; theme park services, motion picture productions, ongoing TV program and motion picture series and live performances; clothing; and, of course, stuffed toy animals. On July 19, 2007, Turtle Pond filed two additional applications for the KNUT mark for foods (later amended to cookies, candy, cereal, ice cream, chewing gum and cakes) and non-alcoholic beverages (later amended to carbonated beverages, bottled waters, vitamin waters and fruit juices). The applications do not claim any priority filing date to the foreign trademark application filed by the Berlin Zoo.

For Turtle Pond’s five April 2007 applications, non-final office actions were issued August 6, 2007. Transpo’s pending application was cited at the time as a possible grounds for refusal, so Turtle Pond certainly had notice of Transpo’s application and its earlier filing date before Transpo’s application was published for opposition. On February 14, 2008, the PTO suspended prosecution of these five applications pending the outcome of Transpo’s application noting that because Transpo’s effective filing date was subsequent to Turtle Pond’s filing dates, Transpo’s registration could be grounds for refusing Turtle Pond’s applications on the basis of likelihood of confusion.

As for Turtle Pond’s two July 2007 applications, non-final office actions were issued October 3, 2007; however, the Examining Attorney did not cite to Transpo’s then pending application. Both have received final actions, but the necessary changes relate to the identification of goods and not to any substantive refusals to register.

While the registration of Transpo’s KNUT mark now raises an issue for Turtle Pond’s five April 2007 application, the only application that is likely to be in serious jeopardy is Turtle Pond’s application for the mark KNUT for stuffed toy animals because Transpo’s registration for the mark KNUT for “stuffed toy bears” and “teddy bears” will certainly be cited as a grounds for refusing registration of Turtle Pond’s KNUT mark under Section 2(d) likelihood of confusion (identical marks, identical goods).

It will be interesting to see how far Turtle Pond is willing to go to assert its “legitimate” rights to the name KNUT against this company that got an advantage by being a little faster to file at the PTO. An investigation into Transpo’s “bona fide intent” to use the mark when it originally filed the application as well as its claimed date of first use in commerce (May 15, 2007) may be worthwhile if Turtle Pond desires to file a petition to cancel Transpo’s registration.

Of course, the bigger lesson here is that this entire situation could have been avoided had the applications instead been filed by the Berlin Zoo under Section 44(d) of the Lanham Act, 15 U.S.C. §1125(d). Under Section 44(d), foreign applicants can claim a priority date based on an earlier filed foreign application so long as the U.S. application is filed within 6 months from the filing date of the foreign application. Here, the Berlin Zoo could have filed trademark applications as late as September 23, 2007 (after Turtle Pond had received notice of Transpo’s pending application and even after Transpo’s application had been published for opposition) and still received a priority filing date before Transpo’s effective filing date.

A grown up Knut (not quite as cute)

Friday, May 16, 2008

American Red Cross receives relief from Johnson & Johnson trademark lawsuit

The New York Times reported today (link here) on the federal court decision late Wednesday in the trademark infringement lawsuit between Johnson & Johnson (“J&J”) and the American National Red Cross (“ARC”) over the famous "Red Cross" symbol. See Johnson & Johnson v. The American National Red Cross, et al, Case No. 07-cv-07061 (S.D.N.Y). A copy of the opinion and order by U.S. District Court Judge Jed S. Rakoff can be downloaded here.

The court’s decision dealt with several motions for summary judgment brought by both sides and included not only J&J’s primary claims against ARC, but also several counterclaims brought by ARC against J&J for violation of the same statute that ARC allegedly violated, unfair competition, and cancellation of J&J’s trademarks.

The basis of J&J’s original lawsuit was that ARC was in violation of 18 U.S.C. §706 (the statute which makes it a crime for anyone to use the Red Cross symbol other than the ARC and its duly authorized employees and agents), ARC’s federal charter, and the Geneva Convention when ARC entered into various licensing arrangements with several third parties (the “third parties”) authorizing them to sell products bearing the Red Cross symbol.

Ultimately, it was the plain language of the statutes and past actions by the ARC and J&J which led the court to conclude that ARC was not in violation of §706, its federal charter or the Geneva Convention.

After going through a detailed history of the Geneva Convention’s original efforts to foster a distinctive symbol to be used for international humanitarian efforts and the law passed by the U.S. Congress establishing the ARC’s federal charter (along with subsequent amendments), the court concluded that the Congressional Act establishing ARC’s charter (the “Charter Act”), on its face, did not impose any limitations on ARC’s use of the Red Cross emblem and logo. The court added that the prohibition language added to the Charter Act in 1910 (which served as the precursor to §706) itself suggested that “ARC could use the Red Cross logo and words ‘for the purpose of trade or as an advertisement to induce the sale of any article whatsoever or for any business or charitable purpose,’ since such uses were only forbidden to others.” Slip op. at 7. The court further noted that §706 in its current form on its face does not place any kind of limitation of any kind on the purposes for which ARC may use the Red Cross symbol.

The court then found that entering into a license agreement of the type that ARC entered into with the third parties is a “standard business arrangement” undertaken “for the purposes of trade” and “to induce the sale of any article,” and thus does not violate §706. The court added that the fact that the ultimate purpose of these licensing activities was a charitable purpose (to raise funds for the ARC) emphasizes the legitimacy of such actions under §706. [Comment – if ARC only gets a small percentage of the proceeds, can this really be considered comparable to legitimate fundraising efforts?]

The court then went on to discuss how ARC for over a century before J&J’s lawsuit had entered into many licensing arrangements to use the Red Cross symbol in a commercial context. In 1904, ARC granted a license to a New Jersey company to sell various first aid products displaying the Red Cross symbol in return for a percentage commission of every product sold. Even J&J, in 1913, wrote a letter to ARC offering to manufacture first aid kits that would contain J&J goods but labeled with the Red Cross symbol and that would state that they were being manufactured by J&J on behalf of ARC. In the late 1980s, ARC licensed a company to make and sell an ARC first aid kit. In the 1990s, ARC partnered with several companies to put the Red Cross symbol on various products (watches, jewelry, and bottled water). Today, ARC has agreements with various manufacturers to put the Red Cross symbol on items distributed in the medical field.

The court rejected J&J’s argument that §706, while not prohibiting ARC itself from making commercial use of the Red Cross symbol, nonetheless prohibits the use of the Red Cross symbol by the third parties because the statute clearly prohibits such use by anyone other than those using the Red Cross symbol in a commercial context before the original prohibition was passed (such as J&J) and the ARC and its duly authorized employees and agents. J&J argued that, as licensees, the third parties are not duly authorized employees and agents. However, the court asserts that J&J misapprehends this statutory language and that it merely represents “classic corporate ‘boilerplate’” reflecting the reality that the ARC is a corporation and can only act through employees and/or agents and that this language says nothing about the scope of ARC’s permitted use of the Red Cross symbol or whether the symbol can be licensed.

The court recast the issue as whether ARC’s right to use the Red Cross symbol under §706 includes uses by others in order to carry out ARC’s permitted uses. The court states “It could hardly be otherwise, for surely every business use, or for that matter charitable use of the Red Cross emblem and words by ARC inevitably involves some subsequent ‘use’ by a third party. . . . No reasonable interpretation of the statute prohibits such use, or any other use that follows in the ordinary course, once ARC, through its employees or agents, has lawfully authorized the initial business use.” Slip op. at 15-16.

The court noted that J&J’s interpretation of the statute would criminalize ARC’s licensing arrangements that it had been entering into for the past century. The court focused on ARC’s “cause marketing” arrangements whereby distributors of commercial goods and services, in order to benefit from ARC’s goodwill, note on their products and advertising that a portion of the proceeds will go to the ARC. The court further highlighted the “doubtfulness” of J&J’s interpretation of §706 by noting the “ironic fact” that in 1986 J&J itself entered into a similar cause-marketing promotional agreement with ARC.

In summary, “ARC itself is engaging in a use the statute permits, and the subsequent uses of the Red Cross emblem and words by the parties with whom ARC contracts, not to mention those still further down the usage chain, cannot be held to violate 706 without thereby rendering nugatory the permission granted ARC for the initial use.” Slip op. at 18.

The court then proceeds to explain its dismissal of each of J&J’s claims. The tort of interference with prospective economic advantage under New York law was dismissed because ARC’s actions, even if they were deemed to violate §706, the Charter Act, or the Geneva Convention, do not constitute a crime or independent tort under New York law. The common law unfair competition tort was dismissed because J&J introduced no evidence of palming off or misappropriation. And the Federal and State trademark dilution claims were dismissed because J&J could not possibly show that the Red Cross symbol is a truly distinctive mark which consumers would see as a designation of J&J’s goods only given the ARC’s long-time use.

The court did not dismiss, however, the claim against ARC for tortious interference with contractual relations – specifically, J&J had entered into settlement agreements with two parties over the use of crosses similar to J&J’s logo. The court concluded that a genuine issue of material fact existed about whether ARC knew about J&J’s agreements with the two parties when ARC entered into its own agreements with those parties and whether ARC thereby intended to induce the parties to breach their agreements with J&J.

While the court’s decision was mostly a defeat for J&J, the court did dismiss the counterclaims against J&J by the ARC, thereby reinforcing J&J’s right to continue to use its logo on its products. Noting that the “grandfather” clause in the 1910 Charter Amendment is what allows J&J currently to use the Red Cross symbol “for the same purpose and for the same class of goods” as it was using before January 5, 1905, ARC attempted to argue that J&J’s current uses exceeded its rights under the clause. ARC objected to several of J&J’s products and modern-day variations of its logos; however, the court found that none of these uses of the Red Cross symbol created a different commercial impression than J&J’s pre-1905 use. The court commented that “If ARC were correct that J&J could only sell kits containing exactly the same products as those sold prior to 1905, ‘J&J would be constrained to continue forever selling kits that contain such antiquated products as cat gut ligatures and kidney plasters.’” Slip op. at 32 (quoting Pl. Rep. at 19).

The court did not dismiss the counterclaims for trademark invalidity and cancellation of a trademark brought by the third parties because J&J’s arguments to dismiss were based entirely on the premise that the third parties did not have standing to bring such claims because their use of the Red Cross symbol was illegal – a conclusion rejected by the court, thus mooting J&J’s argument.

Vegas™Esq. Comments:
I will admit that in my previous blog post about this case (link here), I called this one wrong. I would have opined differently had I known all of the details of ARC’s past licensing activities, including those involving J&J (factual details that, in my defense, I did not have at the time).

While the court may be correct that ARC’s licensing activities do not violate the plain language of the statute, I think it does violate the spirit of ARC’s exclusive right to use the Red Cross symbol and the implicit notion that any use should not be of a commercial nature, but only as part of the original humanitarian purpose of the Red Cross. The court even quotes an official commentary to certain prohibitions set forth in the Geneva Convention on the use of the Red Cross symbol (most notably, the admonition to Red Cross organizations worldwide that sell products bearing the Red Cross symbol in order to raises funds because such use is “likely to lessen, in varying degrees, the standing of the emblem, and are therefore prejudicial to the good name of the Red Cross as a whole.”). However, the court set aside this commentary as merely discouragement of such use, and not a prohibition.

It will be interesting to see if J&J decides to appeal this case once a final decision is made. Most of the press believes the lawsuit to be a public relations disaster for J&J.

Of course, there is always another alternative for J&J – if the court finds that the law does not on its face prohibit such licensing activities, then lobby Congress to change the law. While the ARC may cry foul at any such efforts, J&J has enough to make a reasonable argument before Congress that ARC’s use of the Red Cross symbol should be scaled back to a use more in line with its original purposes. ARC’s charter, after all, is a government granted charter – and what the government giveth, the government can taketh away.

Wednesday, May 14, 2008

PTO revises proposed rules for Requests for Reconsideration of a Final Office Action in Trademark Cases

On April 28, 2008, the U.S. Patent and Trademark Office ("PTO") withdrew its previous proposal (link here) to amend the Rules of Practice in Trademark Cases to require a request for reconsideration of an examining attorney’s final refusal to be filed through the PTO’s Trademark Electronic Application System (‘‘TEAS’’) within three months of the mailing date of the final action.

After receiving comments about the shortened deadline period in which to file requests for reconsideration, the PTO determined that the benefits that would be achieved by the shortened deadline did not outweigh the objections expressed by some commenters.

As for mandatory filing through TEAS, the PTO is now proposing an alternative rule requiring a fee of $50 for filing a request for reconsideration on paper. No fee would be required for a request for reconsideration filed through TEAS; however, a TEAS Plus applicant who files a request for reconsideration on paper would also be responsible for the fee for the loss of TEAS Plus status pursuant to §§ 2.23(b) and 2.23(a)(1)(i).

The PTO’s Notice can be downloaded here. Comments to the proposed rule must be received by June 27, 2008.

Monday, May 12, 2008

XS v. SX -- Another Energy Drink Battle

This is one of those trademark applications where at first I’m a little surprised the PTO even allowed it to be published for opposition, but then once you know how the PTO searched for conflicting marks, it becomes a little more obvious – and underscores the importance of the trademark opposition process.

On August 9, 2007, SX Energy Drink, LLC (“SX Energy”) filed an intent-to-use trademark application to register the word mark SX for energy drinks (in international class 32). The application was published on January 15, 2008.

On May 12, 2008, XS Energy, LLC (“XS Energy”), the owner of a line of energy drinks marketed under the stylized mark XS (shown below) filed and opposition against SX Energy's proposed mark. See XS Energy, LLC v. SX Energy Drink, LLC, Opposition No. 91184024 (T.T.A.B. May 12, 2008). XS Energy’s XS mark was registered on March 30, 2004 and covers fruit flavored dietary supplement energy drinks (in international class 5).

The different classifications is not what led the PTO to overlook the obvious similarities between the two marks. The PTO’s search focused solely on the mark “XS” (and “X S”) without transposing the letters and most likely would not have discovered XS’s registration anyway even if XS’s goods had been classified in class 32. Nonetheless, it does raise the question as to why the two types of energy drinks are classified in two separate classifications.

The key distinction is the language “dietary supplement”. In XS Energy’s original application filed March 21, 2001, the goods applied for were “drinks” in class 32. However, the PTO later requested clarification of this vague description – laying out three different classifications including fruit flavored dietary supplement energy drinks (in class 5), fruit flavored soft drinks (in class 32), and prepared alcoholic cocktail drinks (in class 33). By choosing the description which included the language “dietary supplement,” XS Energy was choosing to move forward under class 5, which is the class set aside for “pharmaceuticals and other preparations for medical purposes” including “beverages for medical purposes.” In contrast, class 32 is set aside for “non-alcoholic drinks.”

Well, the PTO must have realized subsequently that these “energy drinks” are more appropriately categorized as “non-alcoholic drinks” rather than as “dietary” drinks and updated its Acceptable Identification of Goods and Services Manual to include “Energy drinks” in class 32.

Of course, none of this impacts XS Energy’s trademark rights. XS Energy still holds a presumptively valid registration for the mark XS for energy drinks. When its mark is compared to the proposed SX mark (similar appearance and sound) for similar goods (energy drinks), which are likely to be distributed through similar marketing channels by consumers who are likely to purchase on impulse, XS Energy has a good case for likelihood of confusion.

Friday, May 9, 2008

Las Vegas Trademark Attorney Moving to the Las Vegas Intellectual Property Law Firm of Weide & Miller, Ltd.

I am pleased to announce that, effective Monday, May 12, 2008, I will be joining the Las Vegas intellectual property law firm of Weide & Miller, Ltd.

Weide & Miller is a full-service intellectual property law firm which prides itself on providing quality legal services in all areas of intellectual property law at affordable rates compared to other large intellectual property law firms. The firm has received Martindale Hubbell’s highest peer review rating – an AV® certification.

Weide & Miller offers legal services relating to a wide range of intellectual property matters, including patent and trademark prosecution both in the U.S. and worldwide; intellectual property licensing and litigation; intellectual property clearance, management, and monitoring; intellectual property acquisitions and sales; copyright registrations and disputes; domain name disputes; and trade secret protection and enforcement.

I fully intend on continuing my blog posts after my move although there may be a brief hiatus while I get accustomed to my new surroundings.

I look forward to joining the experienced professionals currently working at Weide & Miller and to providing past and future clients with first-rate legal services for all of their intellectual property matters.

Wednesday, May 7, 2008

Battle of "The Rat Pack" Tribute Shows

[Click here for a more recent blog posting on a significant court decision which impacted this case.]

On May 7, 2008, TRP Entertainment, LLC (“TRP”) filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against BC Entertainment, Inc. (“BCE”), Barrie Cunningham, and Ian Hammer (the “Defendants”). See TRP Entertainment, LLC v. BC Entertainment, Inc. et al, Case No. 08-cv-00579 (D. Nev.). A copy of the complaint can be downloaded here.

TRP is the production company behind the “Rat Pack” tribute show “The Rat Pack is Back” currently playing at the Plaza Hotel and Casino in Downtown Las Vegas, but which apparently has performed in many other cities nationwide.

TRP is also the current owner of two federal registrations for the mark THE RAT PACK IS BACK (one for “entertainment [sic] services, namely, live stage musical productions” and one for “clothing, namely, hats, t-shirts, jackets, and sweatshirts”). The marks were previously owned by DRDC Productions, Inc. (“DRDC”), but were recently assigned to TRP on April 24, 2008. Up until then, TRP used the marks under license from DRDC.

In addition to the THE RAT PACK IS BACK mark, TRP also claims to have used the mark “The Tribute to Frank, Sammy, Joe and Dean” since at least May 24, 2002 in conjunction with its “Rat Pack” tribute show.

TRP alleges that the Defendants began producing a show entitled “RAT PACK – Frank, Sammy, and Dean” “The Rat Pack A Tribute to Frank, Dean & Sammy,” or “Rat Pack.” BCE’s website lists several shows produced by BCE – one of which is its “Rat Pack” tribute show (described here – and which notably includes the disclaimer “This show is not associated in any way with The Rat Pack Is Back or any other Rat Pack show or production.”).

On March 15, 2007, TRP sent a cease and desist letter to Defendants BCE and Cunningham. Soonafter, and possibly in response to TRP’s letter, on March 19, 2007 BCE file an intent-to-use application to register the word mark THE RAT PACK (for various entertainment show, including a “live musical stage shows specifically paying tribute to Frank Sinatra, Dean Martin and Sammy Davis Jr with celebrity impersonators.”)

BCE subsequently filed an amendment to allege use on March 28, 2007, alleging first use in commerce on October 1, 2006. On July 2, 2007, the PTO rejected registration under Section 2(d) likelihood of confusion over TRP’s registered mark for “entertainment services.” The PTO also cited two other pending applications for the mark THE RAT PACK LIVE AT THE SANDS (word mark and design mark). BCE’s response to the PTO’s non-final action did not address the PTO’s likelihood of confusion rejection. Instead, BCE attempted to change the drawing of its mark to the following stylized design mark:

In the PTO’s suspension letter, BCE was notified that its proposed amendment to the drawing was unacceptable because it would materially alter the essence or character of the mark (see 37 C.F.R. §2.72; TMEP §§807.14 et seq.). BCE attempted to make an argument for no likelihood of confusion in a status inquiry; however, the PTO made its likelihood of confusion rejection final on January 18, 2008.

On April 13, 2007, TRP sent a second cease and desist letter to BCE and also demanded that BCE abandon its service mark application.

On December 13, 2007, BCE filed a second application to register the above stylized design mark (“A TRIBUTE TO THE RAT PACK FRANK, DEAN & SAMMY A BC ENTERTAINMENT, INC. PRODUCTION” for various entertainment services including “Entertainment in the nature of live performances by celebrity tribute shows featuring impersonators of frank sinatra dean martin and sammy davis junior”) and claiming first use in commerce date on October 1, 2006.

The PTO once again rejected registration of BCE’s mark on the basis of likelihood of confusion, citing TRP’s aforementioned registration as well as a second registration held by a California company named Direct From Vegas Productions, Inc.(“DFVP”) for the word mark “DIRECT FROM VEGAS THE RAT PACK” (for entertainment services). Interestingly, DFVP’s mark faced a similar Section 2(d) rejection over TRP’s registration, but was able to argue that its marks, when viewed in its entirety, is sufficiently different than TRP’s registration. DFVP cited several other registrations with the terms “THE RAT PACK” where the PTO issued notices of allowance. Also interesting is that the PTO required DFVP to disclaim the term “THE RAT PACK” because it merely describes the style or format of applicant’s live musical performances because applicant’s performances emulate the famous group of Las Vegas performers know as “The Rat Pack,” that included Sammy Davis, Jr., Frank Sinatra, Joey Bishop, and Dean Martin. The PTO added that “reenacting “The Rat Pack” and their manner is a popular entertainment concept.” One wonders how TRP was able to get its application through the PTO without a similar disclaimer . . . and also how come TRP has not challenged this mark.

On December 26, 2007, TRP sent yet another cease and desist letter to BCE and threatening to sue. According to the complaint, BCE continues to use the mark “The Rat Pack A Tribute to Frank, Dean & Sammy.”

TRP’s causes of action are federal trademark infringement under Section 32(a) of the Lanham Act (15 U.S.C. §1114(a)), false designation of origin/unfair competition under Section 43(a) of the Lanham Act (15 U.S.C. §1125(a)), and common law trademark infringement and unfair competition. TRP seeks injunctive relief, actual damages, BCE’s profits, treble damages, costs and attorney’s fees.

The "Real" Rat Pack

Vegas™Esq Comments:
TRP is quick to note that its THE RAT PACK IS BACK registration is incontestable – TRP having filed its §15 Declaration of Incontestability on November 5, 2007, which may also explain why TRP waited so long to file any kind of action against BCE. As such, there is no chance of BCE challenging TRP’s registration on the basis of descriptiveness (although even if it could, TRP has been using the mark for so long that it could probably show secondary meaning).

In applying the the Sleekcraft factors, I think BCE may have the advantage. First, while THE RAT PACK IS BACK may be incontestable, it is also weak to the extent that, as the PTO suggested, most consumers recognize the name “The Rat Pack” as the group of Las Vegas performers that included Sammy Davis, Jr., Frank Sinatra, Joey Bishop, and Dean Martin and that reenacting “The Rat Pack” is a popular entertainment concept. Second, the marks, when viewed in their entirety, are dissimilar. Third, BCE’s intent in selecting its mark certainly was not to take advantage of TRP’s goodwill, but rather to come up with a mark that describes its show. However, there are some factors favoring TRP, such as relatedness of the goods, which are identical in this case (entertainment services); similar marketing channels (online advertising, print ads, etc.); and degree of consumer care (consumers may not exercise a high degree of care in choosing their “Rat Pack” tribute show).

What would The Chairman of the Board say?

[Full Disclosure: Subsequent to the date of this blog posting, my law firm was engaged by one or more of the defendants to represent them in this action.]

Tuesday, May 6, 2008

Exclusive Licensee of “Rush” Merchandise Rushes to Court to Stop Counterfeiters

On May 1, 2008, a company named Showtech Merchandising, Inc. filed a trademark infringement lawsuit in Nevada District Court against various John Does, Jane Does, and ABC Company. See Merchandising, Inc v. Various John Does, et al, Case. No. 08-cv-00232 (D. Nev. May 1, 2008).

Showtech sells rock band merchandise for various bands, most notably the band Rush, for which Showtech has been the official merchandiser for over 30 years. Showtech’s Rush goods can be found at its Rush Back Stage website --

And it just so happen that the band Rush is playing at the Mandalay Bay Events Center on May 10th as part of Rush’s Snakes and Arrows Tour.

Without reviewing the complaint, it looks like Showtech, as the exclusive licensee of authorized Rush merchandise, is going after some unknown purveyors of counterfeit Rush merchandise being sold in advance of Saturday’s concert.

Cover of Rush's Snakes & Arrows Album

Monday, May 5, 2008

Terraserver sues Microsoft for trademark infringement over

I’m a little surprised this lawsuit has not received much press yet.

On May 2, 2008, Inc. (“Terraserver”) filed a trademark infringement lawsuit in the U.S. District Court for the Eastern District of North Carolina against Microsoft Corporation (“Microsoft”). See, Inc. v. Microsoft Corporation et al, Case No. 08-cv-00067 (E.D. N.C.). A copy of the complaint can be downloaded here (courtesy of Screenshot

Terraserver operates the satellite imagery database website Terraserver claims that Microsoft is infringing on Terraserver’s trademarks with Microsoft’s competing satellite imagery database website named


According to the complaint, Aerial Images, Inc. (“AEI”), Terraserver’s predecessor in interest, worked with Microsoft and Compaq back in the mid 1990s to develop a website database of worldwide satellite imagery – with AEI providing the satellite imagery and Microsoft and Compaq providing the hardware and software. Terraserver maintains that its agreement with Microsoft and Compaq at the time was that AEI would keep the name “Terraserver” because “Microsoft and Compaq were simply using Aerial Images, Inc.’s name (Terraserver) and imagery to test their hardware and software systems.” As evidence of such tacit approval, Terraserver points to the fact that on March 9, 1998, AEI applied to register the mark TERRA SERVER for “computer services, namely providing a database featuring photographic images and geographic information.” The mark registered on March 21, 2000 – without any objection from Microsoft or Compaq . The registration, however, was cancelled on December 23, 2006, when Terraserver failed to file a Section 8 Declaration of Continued Use – apparently because Terraserver was no longer using the mark “Terra Server” (with a space), but instead was using the mark Terraserver (no space).

The satellite imagery website and database was launched in 1997 using the domain name address “” Terraserver further maintains that when its “arrangement” with Microsoft and Compaq ended in 2000, the parties again agreed that AEI would continue to own and use the domain name “,” which AEI, and later Terraserver, continued to do.

Terraserver argues that through extensive marketing of its website worldwide, the domain name has acquired a secondary meaning and is recognized as a source identifier for Terraserver’s web-based satellite imagery database.

Terraserver also holds two registrations for the marks TERRASERVER and TERRASERVER-USA. The TERRASERVER mark was applied for as a use-in-commerce application on July 21, 2003 (March 1, 1998 was claimed as the first date of use in commerce) for “a computer database available through an internet website that provides photographic images and geographic imagery obtained from satellites.” The mark registered December 21, 2004. The TERRASERVER-USA mark was applied for as an intent-to-use application on December 16, 2003 for “displaying the satellite and aerial images of others on a computer server.” The mark registered on June 13, 2006.

According to Terraserver, Microsoft began operating its “” website in the summer of 2003 (Note: the Internet Archive suggests a date of around June 7, 2003 – about a month and a half before Terraserver submitted its TERRASERVER application). Terraserver asserts that Microsoft has continued to operate its website despite Terraserver’s demands “on numerous occasions” that Microsoft stop using its registered trademarks.

Terraserver cites two examples of “actual confusion” to support its case. The first is the Wikipedia entry for Terraserver which describes user confusion between the two. [Comment: We all know how reliable Wikipedia evidence is, especially for demonstrating likelihood of confusion.] The second example is a USPTO office action which initially refused to register TERRASERVER-USA on the basis of likelihood of confusion with the TERRA SERVER mark (with the space) [Comment: How exactly does that show actual confusion between Microsoft’s site and Terraserver’s site?].

Terraserver’s causes of action are for registered trademark infringement under Section 32 of the Lanham Act (15 U.S.C. §1114), false designation of origin/unfair competition under Section 43(a) of the Lanham Act (15 U.S.C. §1125(a)), trademark dilution under Section 43(c) of the Lanham Act (15 U.S.C. §1125(c)), and unfair and deceptive trade practices under Chapter 75 of the North Carolina General Statutes. Terraserver seeks injunctive relief, actual damages, treble damages, costs and attorneys’ fees

Vegas™Esq Comments:
One interesting nuance with respect to Terraserver’s TERRASERVER-USA application is that the filing date of this “intent-to-use” application was several months after Terraserver acknowledges Microsoft already had its own website up and running at the domain name While the dates of first use for this mark are claimed as May 1, 2003 (which coincidentally is several days before the domain name was registered by Microsoft), this date of first use is based on a Statement of Use filed by Terraserver on March 23, 2006. What is even more interesting is that when you plug the web page included in one of the Specimens of Use ( into the Internet Archive, the web page seems to have made its first appearance around February 8, 2006 – just before the page was submitted as a specimen of use and several months after Terraserver’s initial specimens of use (submitted September 20, 2005) had been rejected as inadequate (Terraserver submitted a picture of a hat displaying the TERRASERVER-USA mark and an address label). Furthermore, if Terraserver had really been using the TERRASERVER-USA mark since May 1, 2003, wouldn’t one think that the company, already a high profile internet site, would have been saavy enough to acquire the same domain name address? Unless, of course, Terraserver was not actually using the make at the time. Ever heard of Occum’s Razor?

Terraserver may have an uphill battle to fight to the extent it is relying upon its TERRASERVER-USA registration. Given the suspiciousness surrounding its claimed use of the mark, Terraserver had better be prepared to show more concrete evidence that it was legitimately using in commerce the TERRASERVER-USA as declared in its Statement of Use.

Indeed, by including TERRASERVER-USA as a basis for infringement, Terraserver may have muddied up what otherwise would have been a much cleaner case of infringement against TERRASERVER-USA based on the TERRASERVER mark alone and opened itself up to an “unclean hands” defense by Microsoft.

Another interesting nuance with respect to Terraserver’s TERRASERVER application is that the specimen of use provided by Terraserver was a copy of the website showing “terraserver®.com.” The PTO apparently had no objection to the presence of the ® symbol on the specimen, and presumably, the ® was based on the “Terra Server” registration in existence at that time. Nonetheless, such use (or misuse) of the ® symbol also makes the TERRASERVER registration vulnerable to claims of “unclean hands” (see prior blog post here) although not to the same degree as TERRASERVER-USA given the reasonable explanation for using the ® symbol under the circumstances.

Finally, the big question is why Terraserver waited so long to pursue this action when it appears as if it could have been brought back in 2003 . . .unless there is something else going on here that is not apparent from the complaint (something in the “agreement” between Terraserver, Microsoft, and Compaq). By waiting so long, Terraserver may be vulnerable to a laches defense by Microsoft – the length of delay appears to be almost five years, there does not appear to be any excuse for such delay, and Terraserver had the opportunity to act sooner. Because North Carolina has a three year statute of limitations for tort actions (see N.C.Gen.Stat. Sec. 1-52), the burden will be on Terraserver to prove that application of the defense would be inequitable (as opposed to Microsoft having the burden of showing that laches should apply).

Saturday, May 3, 2008

Barkstrong bites back at Lance Armstrong Foundation over yellow pet collars

Remember BARKSTRONG? The company, through its website, raises money for animal charities by selling yellow pet collars bearing the words BARKSTRONG and PURRSTRONG.

In September 2007, the Lance Armstrong Foundation filed a lawsuit in the U.S. District Court for the Western District of Texas against Chris Ohman and the Animal Charity Collar Group (d/b/a alleging that Barkstrong’s collars infringed the Foundation’s famed LIVESTRONG yellow bracelets that sell for $1.00 each and have raised over $70 million for cancer research. See Lance Armstrong Foundation v. Ohman et al, Case No. 07-cv-00769 (W. D. Texas). [See previous blog post here].

Well, the man behind Barkstrong is biting back with his own infringement lawsuit. On April 30, 2008, Chris Ohman, filing pro se, filed his own lawsuit in the U.S. District Court for the Northern District of Oklahoma against the Lance Armstrong Foundation, Lance Armstrong Endowment Fund, Yellow Dog Designs Inc.. and Mortimer H Nase for patent infringement over a design patent (D556,386 entitled “Pet collar with an embossed slogan for encouraging charitable contributions” issued November 27, 2007) for his Barkstrong pet collars. See Ohman v. Lance Armstrong Foundation et al, Case. No. 08-cv-00251 (N.D. Okla.) A copy of the complaint, which includes a copy of the design patent, can be downloaded here (courtesy of

While the complaint does not directly identify what infringing products Livestrong is selling (other than stating that Livestrong is selling collars with inspirational messages to encourage charitable contributions), it would appear that the Foundation is now selling on its website yellow pet collars with the Foundation's LIVESTRONG trademark:

Ohman cited his pending design patent application (it had not yet issued as a patent at the time) as part of his counterclaims against the Foundation in the original lawsuit. The Foundation’s response was to deny any infringement and to assert patent misuse as an affirmative defense. Ohman’s motion to dismiss has been fully briefed by the parties, but the court has yet to rule. Written settlement offers are due to be made by the parties in June pursuant to the court’s January scheduling order.

The dogfight continues.

Thursday, May 1, 2008

Owner of ISOFITNESS® exercise system files trademark infringement lawsuit in pro per

I previously wrote (link here) about a pro se plaintiff who filed a trademark infringement lawsuit against MySpace. On April 28, 2008, another trademark owner, Greg Kelly, filed in pro per a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against Tom Morris, Marsha Morris and TM Wellness Inc. (the “Defendants”). See Kelly v. Morris et al, Case No. 08-cv-00537 (D. Nev. April 28, 2008). A copy of the complaint can be downloaded here. Unlike the MySpace lawsuit, this particular lawsuit was drafted by someone who had at least done some initial research into how to draft a trademark infringement complaint (although, with respect to certain aspects of the suit, noticeably still pro se).

[Note: The facts set forth in the complaint are a little disorganized. The following details were pieced together from the complaint as well as the correspondence attached thereto.]

Kelly is the developer of a unique high intensity exercise method that he has marketed under the name ISOFITNESS since 2003. He obtained two federal registrations for the mark ISOFITNESS (one for physical exercise and strength training on July 12, 2005 and another for providing fitness and exercise facilities on May 2, 2006).

In the fall of 2004, Kelly was pitched the idea of licensing his ISOFITNESS mark and exercise method outside of Las Vegas by a man named Bob Alexander. As Kelly describes it, the two entered into an “at will” agreement to allow Alexander to market Kelly’s ISOFITNESS system in other markets. Alexander formed a company named Isofitness Systems International, Inc. (“ISI”) for this purpose. In November 2004, ISI lined up its first licensee, a man named Al Coppola who opened an ISOFITNESS location in Conroe, Texas.

Sometime in early 2005, Alexander sold the Defendants on the ISOFITNESS business venture. According to Kelly, he had reservations about the Defendants becoming an ISOFITNESS licensee when Alexander first presented the Defendants to Kelly. Nonetheless, the Defendants formed Isofitness of Texas, Inc. in March 2005 and a license agreement was entered into between the Defendants and ISI in April 2005. While it is not clear if Kelly’s signature was on that license agreement, Kelly maintains that that any signature of his on such an agreement is a forgery. In addition, while Kelly asserts that he had no knowledge of the Defendants involvement in the ISOFITNESS business, he was cc’d on an May 9, 2005 e-mail from Alexander to one of the Defendants regarding the Defendants’ involvement in the ISOFITNESS business

Sometime in May 2005, Kelly and Alexander had a falling out. According to Kelly, Alexander indicated that he wanted to work with Coppola and the Defendants on his own, to which Kelly consented so long as Coppola stopped using the ISOFITNESS name and exercise system and Alexander (or ISI) did not try to sell the ISOFITNESS name or exercise system to anyone else. Kelly removed all references to ISOFITNESS locations in Texas from his website soon after (a fact that Kelly maintains should have been evidence to the Defendants that they were not authorized to use the ISOFITNESS name and system).

Kelly maintains that he did not discover that the Defendants were in business until December 2005 when he came across the website owned by Coppola and the Defendants and which resembled Kelly’s own website. At that time, Kelly sent an e-mail to Coppola outlining his complaints about ISI’s actions and demanding that Coppola and the Defendants change their names and stop using any references to the ISOFITNESS mark or training protocol. Kelly asserted that Coppola and the Defendants had been the victims of fraud by ISI and Alexander (ISI as a corporation went into default in November 2005 and its charter was revoked a year later by the Nevada Secretary of State).

Kelly and Coppola (acting for himself and supposedly on behalf of the Defendants) began taking steps to negotiate a resolution to allow all of the parties to use the ISOFITNESS mark and exercise system. The negotiations apparently dragged on for two years during which time Coppola and the Defendants continued to operate their ISOFITNESS locations. During this time, the Defendants’ website (, by using a search engine optimization company named Magnetiks, displaced Kelly’s own website as the number one hit for a search for ISOFITNESS -- much to the displeasure of Kelly.

On or about October 2007, the parties reached an interim agreement for use of the ISOFITNESS name at a rate of $400 per month (per party) while Coppola and the Defendants worked to change the name of their businesses, which they had done by December 2007 to the name One 30 Fitness (and the Defendants change their corporate name to TM Wellness, Inc.). The agreement, however, did not address any past infringement before October 2007.

On January 31, 2008, Coppola and Kelly reached an agreement settling any past and future claims arising from Coppola’s use of Kelly’s ISOFITNESS marks and intellectual property. The parties also worked out specific differences between the fitness techniques that Coppola would promote compared to Kelly’s ISOFITNESS techniques.

On or about early March 2008 (the dates on Kelly’s letter and the Defendants’ response are a little inconsistent), Kelly wrote a letter to the Defendants (his first ever contact with the Defendants directly) outlining his position on their trademark infringement and terms for resolving the dispute. The Defendants wrote back stating that, after seeking legal counsel, they did not believe they were under any obligation to Kelly. Kelly’s final e-mail to the Defendants on April 14, 2008 expressed his intent to move forward with a lawsuit against the Defendants.

Kelly’s causes of action are for federal trademark infringement, federal trademark dilution, state dilution and unfair competition, common law trademark infringement, cybersquatting, false advertising, and common law trademark infringement.

Vegas™Esq. Comments:
A good illustration of the importance of choosing your business partners wisely and of taking both preemptive and proactive steps to protect your trademarks and other intellectual property.

I find it a little strange that Kelly allowed Alexander to promote ISOFITNESS through an entity over which he admittedly had no control without a clearer delineation of each party’s rights. At a minimum, there should have been some kind of license agreement between Kelly and ISI, which then could have allowed ISI to sublicense ISOFITNESS with Kelly’s express consent. Such arrangement would have more clearly outlined to any potential licensees (like the Defendants) who owned the rights to the ISOFITNESS mark and exercise system. Instead, by allowing Alexander to hold himself out as someone with apparent authority to license the ISOFITNESS system to interested parties, Alexander (through ISI) was able to accomplish the fraud that Kelly maintains Alexander perpetrated on Coppola and the Defendants.

Another curious part of this case is the delay from December 2005, when Kelly first took steps to stop Coppola and the Defendants from using ISOFITNESS, to August 2007, when Coppola first presented Kelly with some kind of proposal to be the exclusive worldwide licensee of ISOFITNESS – a proposal that Kelly ultimately rejected. The complaint lacks any examples of the good faith negotiations that took place during those 20 months – during which time Kelly never contacted the Defendants directly or otherwise put them on notice (even though Kelly acknowledges having the Defendants’ home address back in December 2005). Kelly seems to rely on his discussions with Coppola as putting the Defendants on constructive notice because Coppola served as some kind of trainer and sponsor for Defendants’ ISOFITNESS business.

As for the complaint itself, while not bad for a non-lawyer plaintiff representing himself, it does suffer from some obvious errors although nothing so erroneous as to make the complaint entirely frivolous. The heart of the dilution cause of action is the aforementioned “dilution” caused by the Defendants’ website and their use of Magnetiks to throw off Kelly’s first place listing among search engine listings. There is no discussion of the all-important “fame” of his mark. In addition, Kelly’s cause of actions for dilution and unfair competition under Nevada law cite to Nevada’s law making the use of a Nevada registered mark a misdemeanor, not to N.R.S. §600.435 (for Nevada’s dilution law) or N.R.S. § 598.0915 (Nevada’s Deceptive Trade Practice law).

If Kelly desires to continue to fight this lawsuit himself, he may want to start researching how to oppose a Motion to Dismiss under Rule 12(b)(2) of the Federal Rules of Civil Procedure.