Monday, September 29, 2008

Ninth Circuit Decision Broadens Scope of Civil Penalty for Counterfeit Goods Bearing Registered Trademarks

The Ninth Circuit concluded that U.S. Customs can impose a civil penalty on importers who import merchandise bearing a counterfeit mark of a registered trademark even though the owner of the registered mark does not manufacture or sell the same type of merchandise imported. See United States v. Able Time, Inc., Case No. 06-56033 (9th Cir. September 25, 2008).

On May 7, 1999, Able Time, Inc. (“Able Time”) imported a shipment of watches into the United States that bore the Tommy Hilfiger registered trademark “Tommy”. At the time, Tommy Hilfiger had a registered trademark for the mark TOMMY for cosmetic goods such as cologne, after-shave and deodrants (in International Class 3). Even though Tommy Hilfiger did not make or sell watches at the time (a class of goods in International Class 14), the watches were seized by the Bureau of Customs and Border Protection (“Customs”) pursuant to 19 U.S.C. § 1526(e) (which allows Customs to seize merchandise bearing a “counterfeit mark”). Tommy Hilfiger later applied to register the mark TOMMY for watches in class 14 on November 30, 1999, and received its registration on September 17, 2002.

Meanwhile, Customs filed in rem forfeiture action against the watches on November 3, 2000, but the action became mired in appeals and defective service of process such that the government was ultimately unable to pursue the forfeiture lawsuit because the statute of limitations had run and the watches were returned to Able Time on April 8, 2005.

In February and March 2004, Customs also issued several notices to Able Time of the imposition of a civil penalty on Able Time pursuant to 19 U.S.C. § 1526(f) which allows for the imposition of a penalty against any person who imports merchandise seized under § 1526(e). Customs filed the current lawsuit at issue over the civil penalty on April 15, 2004. The district court ultimately granted Able Time’s motion for summary judgment after concluding as a matter of law that the imported watches could not be “counterfeit” under the Tariff Act because Tommy Hilfiger did not make watches at the time of the seizure.

The government appealed to the Ninth Circuit, which reversed the district court’s granting of Able Time’s motion for summary judgment and remanded the case for further proceedings. The Ninth Circuit agreed with the government that the Tariff Act (19 U.S.C. § 1526 et seq) does not require an the owner of the registered mark to make the same type of goods as those imported bearing the counterfeit mark – the so-called "identity of goods or services" requirement:

We conclude that the Tariff Act does not contain an identity of goods or services requirement. We hold that Customs may impose a civil penalty pursuant to 19 U.S.C. § 1526(f) upon an importer of merchandise bearing a counterfeit mark, even though the owner of the registered mark does not manufacture or sell the same type of merchandise.

While there is a lot of discussion from the Court addressing other trademark statutes and the legislative history therof in addressing each of Able Time’s valiant (but ultimately doomed) arguments that the Tariff Act does require identity of goods or services, at the end of the day the Court found that the plain language of the statute does not contain an identity of goods or services requirement, and because the language of the statute is unambiguous, one should not be read into the statute.

Just a friendly reminder to all registered trademark owners holding a trademark registered on the Principal Register which brands goods which are susceptible to counterfeits being made overseas and imported into the U.S. – you can electronically record your registered trademark with U.S. Customs and Border Protection through CBP’s Intellectual Property Rights e-Recordation (IPRR) application. Recordation allows CBP officers monitoring imported goods to prevent the importation of goods bearing a counterfeit infringing mark.

Friday, September 26, 2008

Pennsylvania Law Firm Sues Domainer Company Using Firm’s Name to Host Web Directory Sites

On September 22, 2008, the Pennsylvania law firm of Hourigan, Kluger & Quinn, P.C. (“HKQ”) filed a trademark infringement and cybersquatting lawsuit in the U.S. District Court for the Middle District of Pennsylvania against Domain Discreet, a Canadian company (based on its phone number since its whois record lists an address in the remote Portugal island of Madeira) in the business of domaining (buying and selling domain names like real estate - its inventory of domain names reportedly is in excess of 300,000 domain names and growing). See Hourigan, Kluger & Quinn, P.C. v. Domain Discreet, Case No. 08-cv-01753 (M.D. Penn.). Click here for an article on the lawsuit.

HKQ has been in business since May 1, 1997. The law firm received a registration for its name HOURIGAN, KLUGER & QUINN as a servicemark for legal services in 1998. In 2004, the firm also registered the initials HK&Q for legal services, and more recently received in 2007 a registration for the above design mark HKQ HOURIGAN, KLUGER & QUINN, PC NO ONE WILL WORK HARDER FOR YOU for legal services.

Around March 13, 2000, Domain Discreet registered several domain names incorporating the law firm’s registered service mark, including and (the company supposedly purchased, but a quick search reveals that name to now be available). The websites currently lead to the typical “web directory” page with multiple click-through links to other law firms with pay-per-click ads.

HKQ argues that Domain Discreet’s use of its trademarked name in connection with its web directory site takes advantage of HKQ’s name to generate revenue through its pay-per-click links to competitors and causes HKQ to lose potential clients.

Given HKQ’s clear cut cybersquatting case against Domain Discreet, one wonders why HKQ opted for a lawsuit against Domain Discreet versus a UDRP action. Perhaps HKQ is hoping that it can obtain a judgment for the $100,000 per domain name statutory damages for Domain Discreet’s cybersquatting. See 15 U.S.C. §1117(d). Of course, given the personal jurisdiction issues that HKQ is likely to face in going after a company located outside the U.S. (be it Canada or Portugal), HKQ will likely be limited to an in rem civil action under 15 U.S.C. §1125(d)(2) against Domain Discreet’s domain name registrar in which case HKQ’s ultimate remedies will be limited to an order against the domain name registrar transferring the domain names anyway (the same outcome as a successful UDRP action).

Of course, the real question is why would a law firm which had the foresight to file a trademark application to register its name as a federal service mark not also obtain the related domain names?

Thursday, September 25, 2008

Jones Day Continues War on Free Speech by Opposing Amicus Brief in Trademark Infringement Lawsuit Against Blockshopper

Paul Alan Levy provides an update (link here) on the Opposition filed by Jones Day opposing the Motion for Leave to File the Amicus Curiae Brief in Support of’s Motion to Dismiss filed by Public Citizen, the Electronic Frontier Foundation, Public Knowledge and Citizen Media Law Project (a brief that has received overwhelming praise among the trademark law community – its impact evident by Jones Day’s quick action to exhaust any effort to prevent its consideration by the court). Techdirt also comments here.

In short, Jones Day, as part of its ongoing battle to move forward with its absurd trademark infringement lawsuit against Blockshopper, is using additional absurd arguments (although not so absurd that Jones Day isn't able to make them appear nonfrivolous) to oppose the filing of the Amicus Brief. One has to wonder – if Jones Day is truly confident in its underlying legal position, why would it be concerned at all about an amicus brief? [Comment—Methinks Jones Day doth protest too much.

The “friends” supporting Blockshopper have already filed their Reply in Support of their Motion for Leave to File Their Amicus Brief arguing against the points made in Jones Day’s brief.

Monday, September 22, 2008

Wine and Dine Corporation Files (and then Withdraws) $250 million Cybersquatting Lawsuit

This lawsuit makes you wonder “What do you think really happened?”

On September 19, 2008, Wine and Dine Corporation filed a $250 million lawsuit against MDNH, Inc., Marchex, Inc. and Brendhan Hight in the U.S. District Court for the District of Nevada. See Wine and Dine Corporation v. MDNH, Inc. et al, Case No. 08-cv-01259 (D. Nev.)

Unfortunately, I can’t provide my usual level of details on the lawsuit because it turns out that the lawsuit was administratively terminated today and the complaint no longer available on PACER. The docket indicates it was terminated on the basis that the case was "opened in error by counsel."

Of course, in the fast-paced world of the Internet, it didn’t take long for news of this lawsuit to start generating buzz amongst those websites and forums that monitor and discuss domain-name related stories and lawsuits. See, for example, here and here .

What we can glean is that Wine and Dine (or more accurately Wine and Dine Properties Ltd.) owns the federal registered mark WINE & DINE for magazines in the field of food and spirits – registered since 1995 (with date of first use as early as September 24, 1993). The company publishes the online magazine Wine and Dine. As for MDNH, it is the named owner of the website, which was originally purchase in August 2000 and is currently just set up as a web-directory website with the typical pay-per-click links (courtesy of Marchex). Brendhan Hight is the named registrant contact for the domain.

Thus, the lawsuit would appear to be your standard cybersquatting lawsuit (except for the $250 million request for damages). But unless someone out there was able to nab a copy of the complaint before it was removed, I guess we’ll never know – unless the lawsuit is filed again.

[Full Disclosure: My current law firm has performed some services related to trademark maintenance and assignments on behalf of a company that previously owned the subject mark.]

Friday, September 19, 2008

Weight Watchers Sues Campbell Soup Over Weight Watcher’s POINTS

On September 16, 2008, Weight Watchers International, Inc. (“WWI”) filed a trademark infringement lawsuit against Campbell Soup Company (“Campbell”) in the U.S. District Court for the Southern District of New York. See Weight Watchers International, Inc. v. Campbell Soup Company, Case No. 08-cv-8014 (S.D.N.Y.). A copy of the complaint can be downloaded viewed at The Trademark Blog.

WWI is famous for its diet program marketed under the WEIGHT WATCHERS mark. Since 1997, one of WWI’s diet program (the “Flex Plan”) has involved a “Points” system whereby Weight Watcher dieters are given an individual “Points” budget and all food items are assigned a particular “Points” value based on WWI’s own derived formula (pictured below).

p = Points
c = Calories
f = Fat Grams
r = Dietary Fiber Grams

WWI has even registered the mark POINTS for various goods and services including for “food nutrition consultation and advice.”
In July 2008, Campbell introduced a line of “light” soups marketed under its “Select Harvest” brand name. As part of its marketing strategy, Campbell apparently has labeled (or will be labeling) these soups with the “Weight Watcher Points” value as calculated by Campbell according to WWI’s formula. Campbell is also marketing its soups on retail store display racks and online.

Campbell attempted to protect itself by having the following disclaimer on the can’s label as well as on its website:

WEIGHT WATCHERS®, POINTS®, and POINTS VALUE® are registered trademarks of Weight Watchers International, Inc. The number of POINTS® provided here was calculated by Campbell's based on published Weight Watchers International, Inc. information and does not imply sponsorship or endorsement of such number of POINTS® or Campbell's® products by Weight Watchers International, Inc.

However, WWI is apparently unsatisfied with such a disclaimer and feels that Campbell is improperly using without authorization WWI’s trademarks and its reputation and goodwill in the weight-loss industry in order to market its Select Harvest Light product line to consumers trying to lose weight. WWI further argues that consumers are likely to be confused into believing that WWI has approved Campbell’s use of its marks on Campbell’s Select Harvest Light soup products.

WWI sent Campbell a cease and desist letter on August 13, 2008. Campbell responded to WWI’s letter on September 9, 2008, but the complaint does not provide any insight into that response. According to WWI, Campbell is already stocking grocery store shelves with its Select Harvest Light soup products having the infringing label.

WWI’s causes of action are (1) Registered Trademark Infringement under 15 U.S.C. §1114, (2) Unfair Competition/False Designation of Origin under 15 U.S.C. §1125(a), (3) Trademark Dilution under 15 U.S.C. §1125(a), (4) Common law trademark infringement, (5) Common law unfair competition, (6) Dilution under New York law, (7) Unjust enrichment, and (8) Breach of Contract.

The breach of contract cause of action relates to a February 2006 Permitted Use Agreement between WWI and Campbell to which WWI listed the POINTS values for various Campbell's products in the 2006 version of its Complete Food Companion and in WWI's food database at According to WWI, one provision in the Agreement provided that Campbell agreed not to use any of the logos, trademarks, or copyrights belonging to WWI in any advertising, packaging, public relations and promotional materials, or in any other manner other than as set forth in the Agreement. Another provision in the Agreement specifically stated that WWI’s inclusion of Campbell's products in its publication and food database was not an endorsement of Campbell's products and that Campbell may not use WWI’s trademarks to suggest any such endorsement. Campbell further agreed not use WWI’s trademarks, including the POINTS values of Campbell’s products, in any advertising or promotional materials (including online websites) or on any packaging and may not provide information to consumers about a POINTS value of its products in any manner without WWI’s express approval. The parties entered into a second Permitted Use Agreement for the 2008 version of WWI's Complete Food Companion, whereby Campbell agreed not to use WWI’s trademarks in a manner that would create a likelihood of confusion as to the source of any products or services or as to the sponsorship or endorsement of any products or services. WWI claims that Campbell’s use of its trademarks is in breach of these agreements.

In addition to seeking injunctive relief, WWI requests damages in the amount of Campbell’s profits, treble damages, attorneys' fees and costs, and punitive damages.

Thursday, September 18, 2008

UW settles its trademark infringement lawsuit with Washburn over “Motion W” mark

I previously wrote (link here) about the trademark infringement lawsuit by the Board of Regents of the University of Wisconsin System (the “UW”) against Washburn University (“Washburn”) over the latter’s use of a W logo (pictured below) which UW claimed infringed on its so-called Motion “W” registered trademark (pictured above). See Board of Regents of the University of Wisconsin System v. Washburn University, Case No. 3:2007cv00672 (W.D. Wis.).

According to news reports (here and here), the parties reached a settlement agreement whereby Washburn can continue to use its logo so long as the university’s name, mascot name, or mascot symbol is transposed on it. No money reportedly changed hands. Washburn officials also report that they are currently working on developing a new logo for the future.

Wednesday, September 17, 2008

Seventh Circuit reignites AutoZone's trademark infringement claims against OilZone and WashZone

The Seventh Circuit reversed a district court’s decision finding no likelihood of confusion as a matter of law between the large automotive parts retailer AutoZone and an Illinois businessman, Michael Strick, doing business under the service marks Oil Zone and Wash Zone. See AutoZone, Inc. et al v. Strick et al., Appeal No. 07-2136 (7th Cir. September 11, 2008).

AutoZone, in business since 1987, became aware of Strick's two businesses in December 1998, but did not take any legal action against Strick until November 14, 2003 (a cease and desist letter was sent to Strick in February 2003). On cross-motions for summary judgment, the district court found that AutoZone's claims of trademark infringement and unfair competition failed as a matter of law because AutoZone had failed to produce sufficient evidence to show a likelihood of confusion between AutoZone's marks and Strick’s Oil Zone and Wash Zone marks – the district court found that the AutoZone mark and the Oil Zone and Wash Zone marks were "not similar enough for a reasonable finder of fact to find that there is a likelihood of confusion."

The Court of Appeals, reviewing de novo the district court's decision to grant summary judgment, found that the evidence was not so one-sided that it was proper for the district court to determine the issue of likelihood of confusion at the summary judgment stage, and thus reversed the district court’s decision. The Court reached this conclusion by doing its own analysis of each of the seven likelihood of confusion factors adopted by the Seventh Circuit. See Packman v. Chicago Tribune Co., 267 F.3d 628, 642 (7th Cir. 2001).

Regarding similarity of the marks, because the marks are all comprised of two words in the same font, slanted in the same direction, with “Zone” as the second word and the first letter of both words larger than the other letters in the marks, and feature bar designs that suggest movement or speed, the Court found that the marks in this case were similar enough that a reasonable finder of fact could find that a consumer would believe that the marks are connected to the same source. While the Court acknowledged some dissimilarities, “viewing the facts in the light most favorable to AutoZone, as we are required to do at this stage of the litigation, the prominent similarities between the marks may very well lead a consumer cruising down the street to believe, after driving past both parties' businesses, that Oil Zone and Wash Zone represented AutoZone's entry into the oil-change and car wash-services market.”

Regarding similarity of the products, the court stated that:

in light of the similarity of the marks, a reasonable consumer may very well be led to believe that Oil Zone and Wash Zone are AutoZone spinoffs. A retailer or manufacturer with a strong mark venturing into a related service industry would not be that surprising. And the automotive services provided by Strick's businesses are related to the automotive products sold at AutoZone stores. Indeed, there is even some direct overlap between AutoZone's products and the services provided by Strick's businesses: Strick provides car washes and oil changes while AutoZone sells car-wash and oil-change products. A reasonable consumer, taking into account the similarity of the marks, could therefore conclude from the relatedness of the goods and services provided by AutoZone, Oil Zone, and Wash Zone that the marks are all attributable to a single source. Thus, AutoZone has shown that a genuine dispute exists here as well.
Regarding the relationship in use promotion, distribution, or sales between the services of the parties, the court found that the evidence of record showed that both parties sell and promote their automotive goods and services in the Chicago area. Strick tried to argue that the nationwide scale of AutoZone’s services was different than his very localized offering of services, but the court noted that “trademark law makes no exception for the localized infringer.” As for differences in customers, the court held that “the record before us does not rule out the reasonable inference that a substantial congruence exists between the potential customer base in Naperville and Wheaton for AutoZone and Strick's businesses. AutoZone has therefore created a genuine factual dispute for this factor as well.”

Regarding customer degree of care, the district court had found this factor to support AutoZone’s argument for confusion and the Court agreed. AutoZone presented evidence that many of its automotive products are inexpensive and Strick did not present any evidence that his customers are particularly sophisticated. As such, a reasonable trier of fact could conclude that this factor favors AutoZone.

Regarding the strength of AutoZone’s mark, the Court found the evidence of record more than sufficient to support AutoZone’s argument that its AutoZone marks was strong. “The AutoZone mark is displayed prominently on more than 3,000 stores nationwide, and it has been the subject of hundreds of millions of dollars' worth of advertising since 1987.” Strick attempted to argue that the AutoZone mark is weak based on evidence that the word "Zone" is commonly found in other marks. However, Strick did not actually produce any evidence to show how extensively any of the third party marks that use the word "zone" have been promoted or become recognized by consumers in the marketplace, and thus evidence of such marks does not raise any question about the strength of AutoZone's mark. In addition, Strick’s argument fails to note that a mark must be viewed as a whole, and while the word “zone” by itself may be common, the same is not necessarily true for a composite mark like AutoZone, and a trier of fact could reasonably conclude that AutoZone's mark is strong and thus the factor of confusion would favor AutoZone.

Regarding the factor of Strick’s intent to palm off his services as those of AutoZone, while Strick testified that he was not aware of the AutoZone mark when he created the Oil Zone mark, the Court noted that in some circumstances, an intent to confuse may be reasonably inferred from the similarity of the marks where the senior mark had already attained great notoriety. In this case, “a reasonable trier of fact could conclude from Strick's experience in the industry, AutoZone's extensive marketing of its mark in the area where Strick did business, and the close similarity in design between the marks that Strick designed the Oil Zone mark with the intent to mislead consumers into believing that Oil Zone was somehow affiliated with AutoZone.” Whether Strick was honest in not being aware of the AutoZone mark was a decision for the trier of fact to decide.

The Court concluded that based on its own analysis of the likelihood of confusion factors, “a reasonable finder of fact could have found that consumers might be led to believe that AutoZone and Strick's Oil Zone and Wash Zone are affiliated with each other. AutoZone has therefore presented sufficient evidence to create a triable issue of fact on the issue of likelihood of confusion.” As such, it was improper for the district court to grant summary judgment with the existence of so many unresolved genuine issues of material fact, and the Court remanded the case back to the district court for trial.

Finally, Strick had argued at the district court and again a the Court of Appeals, that AutoZone’s claims were barred by the doctrine of laches – based on the delay between the time when AutoZone first became aware of Strick’s businesses in 1998 and when AutoZone finally took action in 2003. However, because a district court's decision to apply the doctrine of laches is discretionary and the district court declined to rule on the issue in its decision, the Court opted to let the district court determine on remand how it will exercise its discretion in this case.

Tuesday, September 16, 2008

Jones Day (Ab)Using Trademark Infringement Lawsuit To Stop Website From Posting Publicly Available Information

I admit that I missed this big trademark story when it was publicized last week.

In short, BlockShopper is a website which collects publicly available information on real estate transactions in Chicago, South Florida, Las Vegas, and St. Louis. For certain transactions, the website then goes one step further by linking that information with other publicly available information (e.g., publicly posted law firm bios) to write up news articles about such real estate transactions. When BlockShopper reported on expensive condos purchased by two law firm associates (Dan Malone and Jacob Tiedt), BlockShopper identified the two by their employment with “Jones Day” and linked their names to Jones Day’s web site. For that, Jones Day is now claiming trademark infringement. MediaPost ran an article yesterday about the dispute.

Several other bloggers have already eloquently posted comments and criticism on the lawsuit, so I will respectfully defer to them:

  • Paul Levy’s blog post on Consumer Law and Policy Blog;
  • Prof. Marc Randazza’s blog post; and
  • Citizen Media Law Project write-up.
Citizen Media Law Project also has a page devoted to the filings in the lawsuit. The Amended Complaint can be downloaded here.

We’ve all heard the old law adage “A lawyer who represents himself has a fool for a client.” Well, Jones Day has proven the adage once again. One has to wonder what was going through the heads of the lawyers behind the complaint, which the public should be aware was signed by Jones Day lawyers, Paul W. Schroeder, Irene S. Fiorentinos, Meredith M. Wilkes, Robert P. Ducatman, and James W. Walworth Jr (Comment: Curious about why the complaint had so many attorneys named in it -- would you want your name associated with such a pleading?). As Prof. Randazza notes, Jones Day would have had a much less frivolous argument had it pursued a copyright infringement case rather than trademark infringement (for BlockShopper’s use of Jones Day’s pictures of its two associates). But Jones Day – at the foolish direction of its client – chose instead to assert trademark infringement.

If BlockShopper can get this case dismissed for failure to state a claim upon which relief can be granted, I hope that they pursue Rule 11 sanctions against the attorneys for submitting pleadings that contain frivolous arguments or arguments that have no evidentiary support. Unfortunately, such sanctions may be difficult to obtain even in light of the ridiculousness of this complaint given that a big law firm like Jones Day has enough resources to come up with non-frivolous arguments that its frivolous arguments are not frivolous and that its frivolous arguments do have evidentiary support. At a minimum (per Prof. Randazza’s suggestion), the attorneys should be required to attend remedial ethics counseling.

I would also add that if those two associates (or anybody) truly did not want the world to know about their real estate transactions, they had the option of not purchasing real estate at all or, alternatively, not purchasing real estate in their own name (i.e., purchase a house through a private trust or business entity that has no association to their own name). But no one can get around the fact that public real estate records are just that – public. Granted, the Internet and modern technology have made it a lot easier to gather, organize, and publicize it to the world – but that doesn’t change the fact that the information is public.

Friday, September 12, 2008

Frozen Yogurt Chain Pinkberry Goes After Fro-Yo Competitor Yogiberry

The Maryland Daily Record had an article the other day (link here) on the trademark infringement lawsuit filed in the U.S. District Court of the District of Maryland by Pinkberry, Inc., the company behind the Los Angeles based frozen yogurt chain, against Yogiberry, Inc., a frozen yogurt company with one store located in Olney, Maryland (and another shop set to open and a third in the planning stages). See Pinkberry, Inc. v. Yogiberry, Inc., Case No. 08-cv-02355 (D. Md. September 09, 2008). The Maryland Intellectual Property Law Blog also writes about the complaint (link here).

Pinkberry holds three federal registration for the mark PINKBERRY (both the word mark and a design mark (pictured above) for restaurant services as well as for the PINKBERRY word mark for frozen yogurt and smoothies) along with several other pending applications for the word PINKBERRY.

Yogiberry has its own federal registration for the design mark YOGIBERRY for retail frozen yogurt store, which issued on September 9, 2008 (the same day Pinkberry filed its lawsuit). Yogiberry also has an application pending for the word mark YOGIBERRY – published for opposition on September 2, 2008.

Pinkberry’s attorneys apparently contacted Yogiberry with a cease and desist letter in May of this year objecting to Yogiberry’s name (and likely its then pending applications for the mark YOGIBERRY) as well as its interior décor. Pinkberry claimed that Yogiberry’s name infringes its PINKBERRY marks and that Yogiberry infringes Pinkberry’s trade dress by intentionally copying Pinkberry’s pastel color scheme and modern furniture (because whenever you think of a frozen yogurt shop with pastel colors and modern furniture, you think of Pinkberry, right?).

After Yogiberry’s own counsel contacted Pinkberry’s attorneys about the necessary changes Yogiberry had to make to comply with Pinkberry’s demands, Yogiberry’s owner, My Huynh, changed the interior décor (repainting orange walls black, repainting yellow and white benches green and white, removing the menu from the wall and putting a TV in its place), but apparently not the name.

Why Pinkberry opted not to file an opposition against Yogiberry’s now registered trademark application back in June is a mystery? But rather than file an opposition against Yogiberry’s other pending application and a cancellation petition against Yogiberry’s issued trademark registration, Pinkberry has opted to go to court where it can seek injunctive relief against Yogiberry’s to stop its use of the Yogiberry name altogether.

This isn’t the first time Pinkberry has taken action to stop competiting frozen yogurt chains from using a “-berry” name. In 2006, Pinkberry sued a frozen yogurt shop named Kiwiberri for trademark infringement and apparently won (there is nothing to be found on and according to a report here Kiwiberri changed its name to Kiwibear earlier this year).

Of course, Pinkberry has had its own interesting legal issues, most notably the lawsuit (now settled) where a customer (who supposedly had ties to a competiting frozen yogurt chain) sued Pinkberry for misleading customers into thinking that its “dessert” was yogurt because in fact the ingredients in its “frozen yogurt” did not meet the California Department of Food and Agriculture regulations required in order for a store to label its product “frozen yogurt.” (see LA Times article here on the “Nogurt” controversy; see also related blog post here and here on the outcome).

One wonders if Yogiberry's case would be any stronger if the chain were endorsed by Yogi Berra. Of course, if asked about the outcome of this lawsuit, Yogi would probably say "It's tough making predictions, especially about the future."
[Update: The Los Angeles IP Trademark Attorney Blog has a writeup here on several lawsuits filed by Pinkberry in the Los Angeles area. ]

Wednesday, September 10, 2008

Self-Described Patent Expert Ronald Riley Sued for Trademark Infringement

This is one of those stories that intertwines the worlds of patents, copyrights, and trademarks.

Those in the patent world, especially those who follow the subject of patent law reform, know the name Ronald Riley. Riley, who describes himself as an inventor, entrepreneur, patent consultant, and independent inventor advocate, is well known for his comments about the patent system, patent reform, and lawyers representing inventors and large companies (click here for a blog that has chronicled some of Riley's more controversial comments among blogs and other online forums).

Well, Riley has been sued by Dozier Internet Law, PC – the law firm which is most widely known among the blogosphere as the law firm that claimed that its cease and desist letter was copyrighted and thus could not be posted online by the recipient (Techdirt article here).

The complaint (posted here), which was filed on September 4, 2008, in Virginia State Court (the Circuit Court for Henrico County, Virginia), is mostly focused on shining a light (in very unflattering terms) on Riley’s promotional activities that have made him the personality he is. See articles on the lawsuit at and Techdirt. Dozier’s own blog also writes about the filing.

The complaint describes Riley’s “marketing” campaign approach as follows:

These campaigns are executed under a three tactic approach: attacking competitors through the publication of defamatory and outrageous accusations on blogs, forums and social networking sites; launching "sucks" sites against competitors programmed so his websites appear when the company is searched, and often containing trademark infringing uses of the competitor's name; and launching "sucks" websites attacking non-inventor or entrepreneur industry businesses for the purpose of generating attention, which leads to a higher ranking on the search engines, more traffic to Riley's sites, and more "marks" for him to solicit.
It should be noted that among Riley’s “suck” sites is (Dozier’s official website is It should be noted that some of Riley’s criticism of Dozier relates to the aforementioned copyright claims by Dozier with respect to its cease and desist letters (in which case I think most people would side with Riley).

The complaint summarizes Riley’s activities as follows:

In summary, Riley concocts credentials in a highly sophisticated way, hijacks and steals the identity and goodwill of organizations, uses inventor and entrepreneur forums, blogs and other online social networking sites for the commercial purpose of locating prospective clients or customers and driving traffic to his sites, and fends off his detractors, and those attempting to spread the truth about Riley to novice inventors and entrepreneurs, by attacking relentlessly the right to speak anonymously, and the right to speak in general. Riley attacks by asserting a broad range of outrageous and false misconduct impugning the reputation of the speakers when identifiable, threatening to track down anonymous posters through lawsuits, and threatening to obtain log files and IP addresses of those exercising their free speech rights to anonymity.
However, in the end, the only causes of action set forth in this complaint are for trademark infringement (state trademark infringement and common law trademark infringement). Specifically, Dozier has a state trademark registration for its name “Dozier Internet Law, P.C.” (having registered the name with the State Corporation Commission's, Division of Securities and Retail Franchising, of the Commonwealth of Virginia).

The crux of Dozier’s trademark infringement cause of action is:

The Riley Businesses have launched a page on the web that contains twelve (12) different instances in which the trademark "Dozier Internet Law" is exclusively used as anchor text in a hypertext link. An anchor link is supposed to describe the destination a visitor will reach when clicking on the link, and functions much like a road map with a shortcut. These anchor links, however, do not take a visitor to the Dozier Internet Law website. Rather, the links send the party clicking on them to the main website used by the Riley Businesses that offer services which directly compete with Dozier Internet Law.
Dozier argues that Riley’s conduct in having such anchored text links leading to a website of Dozier’s competitors has caused initial interest confusion and is likely to cause consumer confusion, mistake and deception as to the source or origin of the goods or services of Dozier Internet Law since the link to Dozier Internet Law leads to a website other than Dozier’s website. In addition, by Riley having such links in the text of his web pages, Riley’s own websites appear whenever a client does an internet search for Dozier Internet Law on a major search engine.

Given the fact that most of the complaint sets forth allegations that have little to nothing to do with the alleged trademark infringement, this lawsuit appears to be just another part of a larger ongoing “personal” dispute between Dozier and Riley. Of course, anybody who knows Riley knows that he is not the type who will back down from what is for the most part a personal attack on his character as well as an attack on his First Amendment rights to free speech – under the guise of a trademark infringement lawsuit.

Monday, September 8, 2008

Second Circuit Affirms District Court’s Denial of Relief to General Cigar in COHIBA trademark dispute

As I previously blogged about here, General Cigar and Cubatabaco have been involved in a contentious trademark battle since 1997 over ownership rights to the mark COHIBA for cigars. Cubatabaco filed a cancellation proceeding against General Cigar over the registered mark COHIBA. See Empresa Cubana del Tabaco v. General Cigar Co., Cancellation No. 92025859 (Filed Jan. 15, 1997). The cancellation moved over to the federal courts in 1997 (see Empresa Cubana del Tabaco v. General Cigar Co., Case No. 97-cv-8399 (S.D.N.Y.)). While the district court in 2004 held that Cubatabaco owned the trademark COHIBA for use on cigars under the famous marks doctrine and ordered General Cigar Co's registration cancelled (opinion here), the U.S. Court of Appeals for the Second Circuit reversed the district court on the basis that the U.S. trade embargo against Cuba prevented Cubatabaco from acquiring property rights in United State trademarks under the famous marks doctrine. See Empresa Cubana Del Tabaco v. Culbro Corporation, 399 F.3d 462 (2nd Cir. 2005), cert. denied, 126 S.Ct. 2887, 165 L. Ed. 2d 916 (2006).

Upon remand to the district court, General Cigar subsequently filed a motion with the district court to amend its prior order to add an order to the USPTO dismissing the pending cancellation proceeding. The district court, however, denied the motion as untimely because General Cigar had not sought such claim for relief earlier in the case and because the TTAB can properly decide the impact of the Court of Appeal's decision. See Empresa Cubana Del Tabaco v. Culbro Corp., 478 F. Supp. 2d 513 (S.D.N.Y. 2007). General Cigar appealed the decision to the Second Circuit Court of Appeals.

On September 4, 2008, the Second Circuit Court of Appeals affirmed the district court’s decision finding no abuse of discretion by the district court in deciding not to order the USPTO to dismiss the pending cancellation proceeding. See Empresa Cubana Del Tabaco v. Culbro Corp. et al, Appeal No. 07-1248, 2008 U.S. App. LEXIS 18819 (2nd Cir. September 4, 2008) (per curiam).

The Court of Appeals reiterated the fact that General Cigar did not request the relief it sought (authorized by 15 U.S.C. §1119) as a counterclaim in its original pleadings, but only after the district court had adjudicated and dismissed the underlying trademark action between the parties. As such, the district court treated its motion for relief as a motion to amend the judgment under Federal Rule of Civil Procedure 59(e).

The Court did not address whether General Cigar’s motion was timely under FRCP 59(e); instead, the Court concluded that when such a request for relief was made for the first time after the underlying trademark dispute had already been adjudicated, such request was essentially based on an estoppel theory:

That is, a request for section 1119 relief made for the first time after judgment essentially amounts to a claim that because the district court adjudicated a trademark case in a certain way, there is nothing left for the PTO to decide, and so it ought to be instructed to follow the court's lead for the sake of efficiency and consistency. See Eagles, 356 F.3d at 731. Like the Sixth Circuit in Eagles, we see no reason why it was an abuse of discretion for the district court simply to tell General Cigar to raise its estoppel claim before the PTO and let the agency decide, subject to review by the Federal Circuit, what preclusive effect should be given to our decision in Empresa V, if any. See id. (noting PTO's expertise in addressing the estoppel issue).

Id. at *6-7.

General Cigar also attempted to argue that its motion was not one to amend the judgment, but rather one to enforce the judgment pursuant to the district court's ancillary jurisdiction. However, the Court cited the U.S. Supreme Court’s caution against exercising ancillary jurisdiction “over proceedings that are entirely new and original or where the relief [sought is] of a different kind or on a different principle than that of the prior decree” (quoting Peacock v. Thomas, 516 U.S. 349, 358 (1996) (citation and internal quotation marks omitted; alteration in original)). Because General Cigar did not raise its section 1119 claim in the pleadings, the issue of whether relief under section 1119 should be granted was never before either the Second Circuit or even the district court in these proceedings until after the district court had dismissed the claims in the case. As such, the relief sought by General Cigar was “of a different kind” than what had been considered by the district court and by the Second Circuit. Furthermore, because the motion is based on an estoppel theory, it is premised on a “different principle than that of the prior decree.” Therefore, the motion was not a proper invocation of the district court's ancillary enforcement jurisdiction.

No word yet on Cubatabaco’s motion filed earlier this year with the district court seeking relief from the district court's previous dismissal of Cubatabaco's claim of relief based on New York common law unfair competition by misappropriation. PACER records do not reveal any outcome from the oral hearing that was scheduled to have occurred April 2, 2008.

Saturday, September 6, 2008

Nuvio and Garmin settle trademark dispute over NÜVIFONE

I previously wrote (link here) about the lawsuit between internet telephone company Nuvio Corp. (“Nuvio”) and GPS maker Garmin Ltd. (“Garmin”) over Garmin’s planned sale of the NÜVIFONE phone.

The parties apparently reached a confidential settlement and the lawsuit was dismissed earlier this week ( story). Garmin’s spokesman said, “We can't discuss the financial terms, but we are pleased with the settlement.” Nuvio’s CEO said, “We both came to terms that protected our respected intellectual property. That’s what we were concerned about.”

So, reading between the carefully crafted lawyer statements, Garmin probably paid a “relatively” small price to Nuvio so that it could move forward with its NÜVIFONE phone as well as its Section 1(b) intent-to-use trademark application for the mark NÜVIFONE. And Nuvio, along with a little bit of money (enough to pay the lawyer fees) and an agreement that sets some limits on Garmin’s use of the NUVI prefix, can proclaim to the world that it aggressively protects its intellectual property.

Garmin had planned to release the Nuvifone later this year, but announced that the rollout has been pushed back to sometime in the first half of 2009. A spokesman for Garmin said the decision to push off the release had more to do with ongoing negotiations with wireless carriers and not the lawsuit.

Friday, September 5, 2008

A Test of Your Generic (Trademark) Sensibility

The TTABlog® today offers up a list of Trademark Trial and Appeal Board ("TTAB") decisions addressing genericness as a test to trademark practitioners and the public on the TTAB’s seemingly schizophrenic approach to addressing genericness refusals. You may be surprised what the TTAB has found to be generic and what it has found to be merely descriptive (in which case such mark could be registered on the Principal Register upon a showing of acquired distinctiveness).

Thursday, September 4, 2008

Trademark Dispute over the “Plaza” in Las Vegas Headed to Trial in Nevada State Court

I must admit that I had missed this local story about an interesting and ongoing Nevada state court trademark battle pitting two billionaires against each other over the hotel name “Plaza.”

Reporter Brian Miller has an article appearing today on (link here) about the lawsuit filed last year by the Tamares Group (“Tamares”) – the owner of the Plaza Hotel & Casino in Downtown Las Vegas – against the El-Ad Group, Ltd. (“El-Ad”), the owner of New York’s famed “Plaza Hotel,” which it purchased in 2004 for $675 million. Tamares is owned by billionaire Poju Zabludowicz while El-Ad is a subsidiary of the Derek Group which is owned by billionaire Yitzhak Tshuva.

El-Ad (through its IP holding company Plaza IP Holdings, LLC) owns the federal registration for THE PLAZA design mark (pictured above) for hotel and restaurant services, which was registered on September 1, 1987 with claimed date of first use dating back to December 31, 1906. El-Ad also has several other pending applications for both the word mark THE PLAZA and THE PLAZA design mark for such services as condominium hotel services and casinos – most of which were filed in February 2007.

New York City's Plaza Hotel

In May 2007, El-Ad announced (click here) its acquisition from Phil Ruffin of a 34.5 acre parcel of land located on the Las Vegas Strip for an estimated $1.25 billion on the site where The New Frontier & Casino used to be located. El-Ad’s planned to develop the site for a $5 billion Las Vegas Strip resort project that was apparently going to use El-Ad’s “Plaza” brand name (LA Times story here).

In March 2008, El-Ad formed a joint venture (El-Ad IDB Las Vegas LLC) with a subsidiary of Israel’s largest business group, IDB Development Corp., in order to develop its “Plaza” project, which is currently slated to begin excavation sometime by the end of 2008 (click here the announcement of the approval of the project by the Clark County Commission).

Artist's rendering of The Plaza - Las Vegas

The only problem is that Las Vegas already has its own “Plaza” hotel – The Plaza Hotel & Casino located at the end of Fremont Street in downtown Las Vegas for the last 30 years. And while Las Vegas’ Plaza Hotel may not be as luxurious as the more well-known Plaza hotel in New York, fans of downtown Las Vegas will agree that this property has become a long-standing fixture of downtown Las Vegas and has held its own over the years amongst the hotel/casinos along “Glitter Gulch” and even amongst those on the Las Vegas Strip.

Las Vegas' Plaza Hotel (and Casino)

Of course, it should also be noted that when the hotel/casino originally opened in 1971, it was known as Union Plaza (changed from Union Hotel) because it was built on the site of the old Union Pacific Railroad Station (if you go back and watch the James Bond film Diamonds are Forever you can even see the Union Plaza under construction). When exactly the “Union” name was dropped is unclear -- in 1992 it was renamed Jackie Gaughan's Plaza and when it was sold to Barrick Gaming Corp. in 2004, the hotel appears to have been rebranded Plaza Las Vegas.

In addition to its common law usage of the “Plaza” name over the years, Tamares holds several Nevada state service mark registrations – although all of them were filed shortly after El-Ad announced its intended “Plaza” project:

  • PLAZA (for casinos) – filed June 6, 2007, claiming first date of use back to 1/1/1977
  • PLAZA (for hotels) – filed June 6, 2007, claiming first date of use back to 1/1/1977
  • PLAZA HOTEL AND CASINO (for casinos) – filed June 6, 2007, claiming first date of use back to 12/31/1982
  • PLAZA HOTEL AND CASINO (for hotels) – filed June 6, 2007, claiming first date of use back to 12/31/1982
  • PLAZA LAS VEGAS (for casinos) – filed May 31, 2007, claiming first date of use back to 3/24/2004
  • PLAZA LAS VEGAS (for hotels) – filed May 31, 2007, claiming first date of use back to 3/24/2004
In addition, on June 1, 2007, Tamares filed two federal servicemark applications for the mark PLAZA LAS VEGAS (for casinos and “Hotel, bar and restaurant services provided in Las Vegas, Nevada[Comment: Interesting limitation of services]). Then on June 6, 2007, Tamares filed two additional service mark applications for PLAZA HOTEL AND CASINO (and design) for casinos and hotel, bar and restaurant services. Because El-Ad’s applications were earlier filed and because of the potential likelihood of confusion, the PTO suspended prosecution of Tamares’ applications pending disposition of El-Ad’s applications.

So, naturally, when El-Ad’s applications started getting published for opposition, it is no surprise that Tamares filed oppositions to registration. See Tamares Las Vegas Properties, LLC v. Plaza IP Holdings LLC (USA), Opposition Nos. 91181304, 91181273, 91181266, and 91181236 (T.T.A.B. Filed December 12, 2007). Of course, all of these oppositions have been suspended pending the outcome of the civil action.

While the lawsuit was initially filed in Clark County District Court, El-Ad removed the case to federal court; however, Tamares succeeded in having the case remanded back to state court (background article from After deciding various summary judgment motions brought by both parties, the court scheduled the case for jury trial beginning next week.

Vegas™Esq. Comments:
This should be an interesting case. Without the benefit of any pleadings, I can only speculate as to the claims and counterclaims -- other than the obvious claims by Tamares that El-Ad's use of the “Plaza” name for its “Plaza Las Vegas” hotel will cause reverse confusion.

El-Ad is probably trying to argue that consumers will not confuse its famed high-end luxury “Plaza” brand with Tamares’ downtown hotel and casino, which explains why the jury will actually be touring the Plaza Hotel & Casino during the trial. However, I think most consumers encountering just the marks alone “Plaza Las Vegas” and “Plaza Hotel & Casino” would believe they are affiliated – and moreover, would associate “Plaza Las Vegas” with the Plaza Hotel & Casino given the long-standing use of the “Plaza” name in connection with this Las Vegas hotel and casino.

While El-Ad could try to argue that “plaza” is so widely used in conjunction with hotels nationwide that the word doesn’t serve as a source identifier (do a Google search for the words "plaza" and "hotel" and see what you find after you get past the obvious hits), that kind of argument would seem to go against El-Ad’s own trademark interests in the “Plaza” brand name.

El-Ad may also try to argue that it actually has superior senior rights to “The Plaza” name for hotel services due to the long-standing use and fame of the name in connection with its New York hotel; however, El-Ad will have a tough time trying to explain away Tamares’ long-standing open and notorious use of the “Plaza” name in connection with its Las Vegas hotel/casino (although the Las Vegas hotel/casino may have only been known just by the words “Plaza” since 2004 which gives El-Ad some argument that its rights are superior -- and also helps should Tamares attempt to assert a laches defense to any counterclaim of infringement by El-Ad). In addition, “The Plaza” is famous for hotels, but can the same be true for “casino services.”

However, if El-Ad cannot stop Tamares’ use of the “Plaza” name, I would think that El-Ad would be more concerned that consumers might actually think that the Plaza Hotel & Casino is somehow affiliated with El-Ad’s Plaza Las Vegas and be disappointed when the Plaza Hotel & Casino is not as upscale as they would have expected from the owners of “The Plaza Las Vegas” – which ultimately harms El-Ad’s goodwill in its own “Plaza” brand. But I guess if you pay $675 million for an old piece of New York property with a well-recognized name, you might be eager to try and exploit that name to get your money's worth on your investment.

Wednesday, September 3, 2008

The Las Vegas Trademark Attorney Blog Turns One Year Old!

It was one year ago that I started my own little foray into "blawging" -- opting to focus exclusively on my favorite intellectual property, trademarks.

While it might be nice to take some time and reflect on the past year, I'm too busy trying to find the next trademark story about which to write. Maybe in another year . . . until then, I hope to keep delivering the same kind of useful, insightful, and/or intestesting trademark stories I can find (which haven't already been covered - probably more eloquently and certainly more concisely - by my trademark blawging brethren -- you know who you are).

Tuesday, September 2, 2008

NY Times Spotlights Growing Importance of Trademarks

The New York Times ran on article yesterday (link here) on the growing importance of trademarks as an intellectual property asset in an e-commerce world. (HT: Marty Schwimmer’s Trademark Blog).

As the article notes, patents have often been the “stars” of the IP world – with trademarks relegated to the status of stepchild (Ed. – which I guess then makes copyrights the crazy uncle in the garage).

The article begins by citing the recent public relations fiasco the USPTO endured – and then rectified – when a month after issuing a Notice of Allowance to Dell for the mark CLOUD COMPUTING (a term having acquired a generic meaning in the computer world), the USPTO cancelled the Notice and reissued a non-final action rejecting the mark on the basis that it was merely descriptive (and most likely generic in which case it can never serve as source-identifier for Dell’s services). See articles on the Dell application at Internet News and Likelihood of Confusion®. The story of Dell’s trademark application is meant to illustrate how the internet can quickly change what might have been a protectable mark (cloud computing) into a generic term free for all to use.

So after years of patents getting all of the attention in the IP world, trademarks are finally getting their turn in the spotlight due to the growing value of brand names and increasing efforts by trademark holders to protect their valuable brands (especially online) – at least according to Stanford Law School Professor Paul Goldstein who is quoted as saying “Trademark is the sleeping giant of intellectual property.”

The article describes the first round of trademark conflict on the Internet – cybersquatting – as having subsided after Congress passed the Anti-Cybersquatting Protection Act in 1999. [Comment: Of course, the article is silent about the still-ongoing related battle of typo-squatting, domain tasting, and web directory websites]. The new trademark battlegrounds are “gripe sites” (although with fair use and free speech pretty strong defenses, is this really a battleground?) and competitors purchasing a company’s trademarks as “keywords” (admittedly a very uncertain area right now – Eric Goldman’s Technology & Marketing Law Blog keeps close track of the ongoing trademark “keyword” decisions working their way through the courts).

The article adds a little bit of nostalgia by describing trademark searching in the “old days” (circa 1979) when examining attorneys would rifle through the wooden “shoes” at the USPTO’s search room organized in such descriptive categories as “grotesque humans” (e.g., the Pillsbury doughboy) and “human body parts” (e.g., the walking fingers for the Yellow Pages). Of course, the USPTO’s online searchable database has not only made searching for trademarks easier for attorneys, but also has made the job easier for the USPTO’s 390 examining attorneys – 85% of whom work from home.