Thursday, October 30, 2008

Hershey Wins TRO Against Furniture Company Based On Trade Dress Dilution

Hat Tip to Marty Schwimmer for posting the complaint filed by Hershey Company (“Hershey”) against Art Van Furniture (“Art Van”), a Michigan furniture company over its use of the above picture on its furniture trucks as well as the somewhat surprising decision by the court to grant a temporary restraining order on the basis of dilution. See Hershey Company et al v. Art Van Furniture, Inc., Case No. 08-cv-14463 (E.D. Mich. Filed October 21, 2008). Reports on the actions of the parties leading up to the lawsuit have been published by the AP and The Detroit New.

Most of the court’s decision is spent analyzing, and ultimately rejecting (ed.—rightly so), a likelihood of success on the merits for Hershey’s trademark/trade dress infringement claims given the balance of the likelihood of confusion factors favoring Art Van.

However, the court then, with a relatively brief analysis of Hershey’s trademark dilution claim, concludes that Hershey has established a likelihood of success on the merits for a claim of trademark dilution by blurring.
Granted, Hershey had the advantage in meeting the primary elements necessary to show dilution under 15 U.S.C. §1125(c) – specifically a famous and distinctive trademark in the nature of the Hershey’s candy bar trade dress, use of the Art Van ad by Art Van after Hershey’s trade dress became famous, and a similarity between the Art Van ad and Hershey’s trade dress that gives rise to an association between Hershey’s trade dress (Comment: Based on the pictures above, I’m not so sure I would agree with the court's finding that Art’s candy bar would give rise to an association with Hershey’s candy bar).

As for whether such association is likely to impair the distinctiveness of the famous mark, when you start to analyze the six factors set forth in 15 U.S.C. § 1125(c)(2)(B) that courts consider in deciding if a junior mark is likely to dilute a famous mark through blurring (degree of similarity, degree of inherent or acquired distinctiveness of the famous mark, exclusive use of famous mark, degree of recognition, intent to create an association with the famous mark, and any actual association), they tend to favor Hershey’s as well (comment--although again, I’m not sure I agree with the degree of similarity in this case).

But what I found curiously odd was the court’s short shrift of Art Van’s parody defense. Naturally, as support for its argument that its use was protected by parody, Art Van cited to the last year’s “Chewy Vuitton” decision in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 260 (4th Cir. 2007), which rejected a dilution cause of action by Louis Vuitton against the makers of “Chewy Vuitton” dog toys.

The following is the sum total of the court’s distinguishing of the instant case and the Louis Vuitton decision (emphasis added):
The [Louis Vuitton] court dismissed the plaintiff’s infringement and dilution claims; there was no mistaking the intentional, yet irreverent nature of the defendant’s miniature handbags. Id. at 260-61.
“It is a matter of common sense that the strength of a famous mark allows consumers immediately to perceive the target of the parody, while simultaneously allowing them to recognize the changes to the mark that make the parody funny or biting.” Id. at 261. Defendant’s “couch bar” may be funny, but it is not biting; its resemblance to Plaintiff’s famous trade dress is too muted to poke fun, yet too transparent to evoke a generic candy bar.
An important theme running through Louis Vuitton is that, while a parody may be nearly identical to the original in some respects, in others it is so different that no one could possibly mistake it for the real thing. Id. Defendant’s design is neither similar nor different enough to convey a satirical message.
So there is no mistaking that a dog toy that sells under the name “Chewy Vuitton” and made to look like (and yet obviously not be) a mini “Louis Vuitton” purse is so intentionally irreverent that it constitutes a parody – yet a sign on a furniture truck showing a brown couch emerging from a candy bar wrapper that looks somewhat like a Hershey candy bar wrapper is not irreverent? Surprisingly, the key appears to be "somewhat like a Hershey candy bar."

Basically, the court is saying that Art Van’s ad, while capturing an image that consumers would associate with Hershey’s trade dress, is not so strong enough that Art Van can claim it to be a parody of Hershey’s trade dress. The court uses the word “biting” although I’m not so sure I would call a “Chewy Vuitton” dog toy a “biting” parody (although I’m sure there are numerous dogs out there that find such toys quite “biting”).

While I’m not so sure I agree with the court’s decision that Art Van’s ad is not “biting” enough (i.e., neither similar nor different enough to convey a satirical message), the lesson learned is that if you are going to parody a famous mark, you had better make sure that you go all out to not only make an obvious association with the famous mark, but also to make an obvious disassociation with the famous mark.

Apparently, if you attempt to parody a Hershey bar, but it’s not clear enough that you are parodying an actual Hershey bar, then such ad, while apparently sufficient for dilution purposes with respect to such Hershey bar, is insufficient for parody purposes.

One wonders if the court would have decided the parody issue differently had the lettering more closely resembled the Hershey candy bar lettering (or even used a word like “Couchey’s” inpace of “Hershey's” and then “Fine Furniture” instead of “Milk Chocolate”) and had the color of the candy bar looked more like the famous dark brown color of a Hershey bar? What is the point where Art Van’s ad would have been intentionally irreverent enough to constitute a parody?

Tuesday, October 28, 2008

Sarasota Realtor’s MLS Domain Name Transferred by Network Solutions Despite Filing of Lawsuit

I previously blogged (here) about the lawsuit filed by Sarasota Realtor Marc Rasmussen in an effort to keep his domain name following a split decision by an arbitration panel which ordered his domain name to be transferred to the Sarasota Association of Realtors (“SAR”).

Unfortunately, due to some carefully crafted language in ICAAN’s Uniform Domain Name Dispute Resolution Policy (“UDRP”), the lawsuit was unable to stop the transfer of the domain.

The Herald Tribune ran an article yesterday (link here) about the lawsuit which noted that as of Tuesday, October 21, 2008, the domain name had been transferred to SAR by domain registrar Network Solutions (based in Virginia) despite Rasmussen’s filing of his lawsuit in the U.S. District Court in for the Eastern District of Virginia. See Rasmussen v. Sarasota Association of Realtors, Inc., Case No. 08-cv-00954 (E.D. Va. September 15, 2008).

Apparently, on October 17, Network Solutions notified the parties by e-mail that the domain name would remain locked pending the outcome of the litigation. The same e-mail also noted that the proper jurisdiction for the lawsuit under the UDRP was either Sarasota (Rasmussen’s domicile) or Virginia (Network Solution’s domicile).

SAR countered by arguing that Rasmussen’s lawsuit had been filed in the wrong jurisdiction, and thus could not stop the transfer of the domain name. Multiple e-mails were exchanged back and forth among the parties, the UDRP arbitrators, and Network Solutions. Lawyers for the National Arbitration Forum (the arbitrator of the UDRP action between Rasmussen and SAR) told Network Solutions that its position on jurisdiction was incorrect because while there are indeed two proper jurisdictions for a lawsuit to block the transfer, the choice of jurisdiction is actually up to the complaining party, in this case, SAR. Thus, because SAR had chosen Sarasota for its jurisdiction, that was the only proper place for a complaint to be filed to stop the domain name transfer. By Tuesday, Network Solutions had turned control over the domain over to SAR, which immediately began redirecting web traffic to its own website.

In order to understand what happened, one must understand certain parts of ICAAN’s Uniform Domain Name Dispute Resolution Policy (“UDRP”) as well as ICAAN’s UDRP Rules (“Rules”).

Paragraph 4(k) of the UDRP describes the circumstances under which the domain registrar agrees to enforce a decision by a UDRP arbitration panel:

If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure.

Paragraph 3(b)(xiii) of the Rules, which describes the jurisdictional statement that all UDRP complainants must have in their UDRP complaints, reads “State that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction”. Paragraph 1 of the Rules defines “Mutual Jurisdiction” as “a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider.”

Thus, at the time SAR filed its UDRP action against Rasmussen, SAR’s complaint had to elect to submit to the jurisdiction of the court in at least one of the available jurisdictions (in this case, either Network Solution’s Virginia domicile or Rasmussen’s Sarasota domicile).

However, because Rule 3(b)(xiii) only requires a complainant to submit to “at least one” of the jurisdictions, SAR likely elected in its complaint to submit itself only to the jurisdiction of Sarasota (and not even mentioning Virginia). Thus, when it came time for Network Solutions to enforce Paragraph 4(k) of the UDRP, that provision explicitly required that the lawsuit against the complainant be filed in a jurisdiction to which the complainant submitted in its complaint. Since Rasmussen’s complaint was filed in Virginia and SAR had submitted to Sarasota, the lawsuit was insufficient to prevent Network Solutions from transferring the domain name.

Rasmussen has said he will continue the fight to get his domain name back. He has his own blog post on his current web site (link here) regarding the ongoing development in the case.

Friday, October 24, 2008

Las Vegas Sun Article Highlights MONGOLS Trademark Seizure and Controversy

As a follow-up to my own blog writeup yesterday (link here), Las Vegas Sun reporter Abigail Goldman wrote a nice article (and I'm not just saying that because yours truly is quoted therein) that ran in today's Las Vegas Sun (link here) about the U.S. Government's seizure of the MONGOLS trademark earlier this week and controversial plan to begin seizing any clothing bearing such mark.

Thursday, October 23, 2008

Court Orders Mongols To Give Up Clothing Bearing Government Seized Trademark

The trademark story du-jour was the decision by a California district court judge to issue an broad injunction order which essentially prevents members of the Mongols Motorcycle Club ("Mongols") from wearing any clothing bearing the Mongols’ trademarked logo. See Associated Press, ZDNet, and

The injunction came after the U.S. government indicted 79 members of the Latino motorcycle gang for racketeering. The government’s 177 page indictment describes the group as engaging in a criminal enterprise involving murder, torture, drug trafficking and other criminal offenses.

The government apparently was able to seize two registered trademarks that were owned by the Mongols. Up until March 26, 2008, Mongol Nation, an unincorporated association based in California, owned the word mark MONGOLS for “association services, namely promoting the interests of persons interested in the recreation of riding motorcycles” and the logo M.C. (and Design) for jackets and t-shirts (pictured above). While these marks were purportedly assigned to a California limited liability company named Shotgun Productions, LLC on March 26, 2008 (click here), a corrective assignment filed on October 13, 2008 raises some questions about the current ownership of the marks because it’s not exactly clear about the nature of the “corrective assignment.” Given the recent timing of the corrective assignment, it’s possible that title to the marks reverted back to the Mongols, which would explain the basis for the Feds’ seizure of the marks (as property of the Mongols). There is also the possibility that the Feds were able to tie in Shotgun Productions, LLC with the Mongols and seize the marks on that basis.

What has raised eyebrows with this court order is that when the court initially issued a temporary restraining order on Tuesday, the order apparently only barred the “sale and distribution” of goods bearing the Mongols trademark. However, language subsequently added stated that gang members and their affiliates “shall surrender for seizure all products, clothing, vehicles, motorcycles ... or other materials bearing the Mongols trademark, upon presentation of a copy of this order.”

The case is being described as the first ever where a government, through a court order, has taken over a gang’s identity through the seizure of the group’s trademarks. It remains to be seen how the government will actually proceed with any such seizures. The U.S. Attorney General’s Office is supposedly drafting up protocols for law enforcement agencies to follow in executing the seizures, which could begin as early as today or tomorrow.

Vegas™Esq. Comments:
Anyone who might have a problem with the government’s seizure of the Mongols’ trademarks should recognize that trademarks are intellectual “property” and thus can be seized like any other property owned by the Mongols such as the 60 motorcycles, mostly Harley-Davidsons, seized by the U.S. Marshal’s Services on Tuesday (each with an estimate value of $22,000). In addition, if the U.S. government is indeed the legal owner of the M.C. logo for jackets and t-shirts, then they can stop the sale and distribution of such goods bearing such mark (and can also prevent any other motorcycle group from naming itself Mongols).

What is more questionable is the use of such marks to stop people from wearing clothing that they already purchased. The media has described this as a first amendment issue, but in terms of whether wearing such clothing would constitute trademark infringement (and thus be rightfully subject to the typical seizure order – although apparently we are dealing with an atypical seizure order), the issue is more about the first-sale doctrine, which protects buyers of trademarked goods. Under the first-sale doctrine, after the trademark owner has sold its trademarked goods to a buyer, the owner cannot later use its trademark rights to control how the buyer uses those goods (the owner is said to have exhausted its trademark rights with respect to those goods, which is why the doctrine is sometimes referred to as the exhaustion doctrine).

So if you buy genuine Nike shoes, and then the government suddenly seizes all of Nike’s intellectual property assets, including Nike trademarks, the government cannot stop people from wearing their previously purchased genuine Nike shoes. In the case of those Mongols members who purchased clothing bearing the Mongols logo, such clothing goods were authorized goods at the time they were purchased by the members, so how can the government now dictate how the members can wear such clothing?

Perhaps an even more interesting question is if and how the government will exploit its newly acquired intellectual property. What steps is the U.S. government going to take in order to ensure that the “goodwill” that has been built up in the Mongols’ registered marks is continued? If the Mongols name is really connected to the alleged criminal activity, how is the government going to continue the tradition? But seriously, does the government really want to be involved in an association of members interested in motorcycles or get into the clothing business? [Those in Nevada may remember that the U.S. government, through the BLM, was in the brothel business (sort of) for a period of time when it owned the trademark Mustang Ranch acquired through a criminal forfeiture proceeding against the prior owners – the government never actually used the name in operating a brothel and eventually sold the trademark on eBay in 2003].

Finally, if the government does not do anything with the marks, then that could be construed as abandonment unless the government can show evidence that such nonuse is due to special circumstances which excuse such nonuse. Perhaps the government needs some time to look for the right motorcycle gang worthy enough to carry on the Mongols name.

[HT to Las Vegas Sun reporter Abby Goldman for bringing this story to my attention.]

Wednesday, October 22, 2008

American Airlines Pursues Another Trademark Infringement Lawsuit Over Keywords

Eric Goldman writes on his Technology & Marketing Law Blog about the new lawsuit filed by American Airlines against Yahoo! And Overture (dba Yahoo Marketing Services) over “keyword” advertising. See American Airlines, Inc. v. Yahoo! Inc. et al, Case No. 08-00626 (N.D. Tex. Filed October 17, 2008). A copy of the complaint can be downloaded here.

When AA filed a similar lawsuit against Google last year (previously blogged here, here, and here), many trademark law spectators watched the legal wrangling with anticipation that it could result in a definitive legal decision on whether the sale of trademarks as keywords constitutes trademark infringement (whether direct, vicarious, or contributory infringement). Alas, the lawsuit between AA and Google settled under under confidential terms (blogged here).
Now with this new lawsuit by AA, does anybody really expect it to end any differently than the suit between AA and Google?

I guess AA’s motive for settling with Google wasn’t the growing financial troubles faced by the airlines in this faltering economy after all.

Tuesday, October 21, 2008

Budweiser wins preliminary injunction against Buttwiper dog toy

Anheuser-Busch, Inc. (“Anheuser-Busch”), the famed brewer of “Budweiser” beer, brought a lawsuit for trademark infringement, unfair competition, and trademark dilution against VIP Products LLC (“VIP”) over VIP’s beer bottle-shaped dog squeeze toy called “Buttwiper.”

Anheuser-Busch sought a motion for preliminary injunction to stop VIP from further selling its dog toy. The court granted Anheuser-Busch’s motion on the basis that Anheuser-Busch was likely to succeed on the merits of its trademark infringement claim, but rejected Anheuser-Busch’s claim that it was likely to s succeed on the merits of its trademark dilution claim. See Anheuser-Busch, Inc. v. VIP Products LLC, Case No. 08-cv-0358, 2008 U.S. Dist. LEXIS 82258 (E.D. Mo. October 16, 2008)

While best known for its beer, Anheuser-Busch sells various non-beer items displaying the famed Budweiser logo including a dog bed and other pet products (food/water bowls, frisbees, balls, leashes, collars, and pet mats), but does not sell or license any type of dog squeeze toy.
VIP sells high-end, high quality, durable dog toys under the brand names "Tuffy," "Mighty," and "Silly Squeakers." The Buttwiper toy is part of the Silly Squeakers's line of products and is packaged together with another beer bottled-shaped toy called Cataroma (designed to look like a “Corona” bottle). VIP also sells another set of beer-shaped dog toys named “O’Drools” (O'Doul's) and “HeinieSniff’n” (Heineken).

Anheuser-Busch discovered VIP’s Buttwiper toy while doing an internet word search using the term "Budweiser Beer" on a Sears & Roebuck Company website in search for a new ice chest product with the "Budweiser" name. Anheuser-Busch hired a survey research firm to conduct a survey to determine if VIP’s Buttwiper was likely to cause confusion with Anheuser-Busch’s Budweiser. The results of the survey were that one in three people interviewed mistakenly believed that VIP’s Buttwiper was somehow affiliated with Anheuser-Busch.

The parties stipulated that the "Budweiser" label is distinctive and was in use before VIP’s Buttwiper; moreover, the court found the label was clearly nonfunctional.

The only likelihood of confusion factors at issue were degree of customer care and evidence of actual confusion. The court agreed that a $10 dog toy was no so high-end that customers would exercise a large degree of care. As for actual confusion, the court accepted the 30% confusion rate found by the survey, which the court found was conducted in a technically proper manner using relevant and non-confusing questions.

Under the circumstances, VIP turned to “parody” as a factor for the court to consider in the likelihood of confusion analysis.

VIP cited last year’s “Chewy Vuitton” decision in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 263 (4th Cir. 2007) as well as the New York district court’s decision in Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp.2d 410 (S.D.N.Y. 2002).

However, the court was able to distinguish both of these cases from the instant case. With respect to the Louis Vuitton case, that case was different because “there was no evidence that Louis Vuitton sold dog toys with its brand; there was no evidence by Louis Vuitton of any survey or of confusion; and there was an appreciable difference in the cost of any Louis Vuitton product and the dog toy at issue.” In the instant case, Anheuser-Busch presented evidence that it does sell pet-related items using its brand, evidence of confusion in the form of the survey, and evidence that the items sold are similar in cost. As for the Tommy Hilfiger case involving a defendant who invoked parody in a case involving a dog perfume sold under the name “Timmy Holedigger,” the court noted that in that case, the parties products did not compete nor was there any evidence of confusion (survey or otherwise).

Once the court found that Anheuser-Busch had at least a “fair chance” of prevailing on the issue of likelihood of confusion, the court proceeded quickly to find a presumption of irreparable harm, that the balancing of the harm favored Anheuser-Busch’s longtime mark, and that the protection from confusion was in the public interest – and granted Anheuser-Busch’s motion for preliminary injunction.

The court then proceeded to analyze the dilution claims and concluded that Anheuser-Busch had failed to show a likelihood of success on the merits for its dilutions claims. [Comment: I opted not to include a discussion of the court’s analysis on the likelihood of success of the dilution claim because it wasn’t even necessary given the court’s decision to grant the preliminary injunction based on the trademark infringement claim, but also because for reasons that are not entirely clear, the court appears to be applying a pre-TDRA analysis even though this is certainly a case that would fall under the TDRA.]

Friday, October 17, 2008

Sarasota REALTOR Files Federal Lawsuit To Keep MLS Domain Name

Inman New ran an article yesterday (link here) about a Sarasota real estate agent who filed a federal lawsuit in the U.S. District Court in for the Eastern District of Virginia in September in order to keep his domain name See Rasmussen v. Sarasota Association of Realtors, Inc., Case No. 08-cv-00954 (E.D. Va. September 15, 2008).

In August 2003, Marc Rasmussen, a REALTOR® and member of Sarasota Association of Realtors (“SAR”), registered the domain name to promote his real estate services. In June, SAR filed a UDRP action against Rasmussen arguing that SAR had acquired trademark rights to the Sarasota MLS mark and that his domain name was confusingly similar to such mark and was registered in bad faith. A split decision by the arbitration panel ordered the domain name to be transferred. Rasmussen’s lawsuit will provide a temporary reprieve against the panel’s domain name transfer order while the parties battle it out in federal court.

As most people (and certainly most real estate agents) know, MLS is the well-recognized abbreviation for Multiple Listing Service – the databases of real estate listings which are controlled by various regional associations affiliated with the National Association of Realtors (“NAR”). In this case, SAR owned the domain name What people may not know is that the term MLS is not actually a registered trademark owned by NAR or any associated group (unlike the REALTOR® mark which NAR for years has worked to protect from genericide).

What complicates the issue for NAR members is that for many years, NAR did not have any policy regarding the use of the MLS mark in domain names. In fact, NAR’s own REALTOR magazine an article at one time (before Rasmussen registered his domain name) by “Mr. Internet” (Michael J. Russer) specifically advising agents to register domain names with the term “MLS” in them in order to drive internet traffic to their sites.

When NAR last November finally did approve a policy, it gave the local associations running the local MLSs the option to enact a policy banning their members from using the terms "MLS" and "Multiple Listing Service" from Web site URLs, company names, e-mail addresses and other marketing materials. NAR also provided some guidance for local associations to use in determining whether the use of terms such as "MLS" in a website operated by an NAR member might conflict with provisions in NAR’s Code of Ethics that all members are bound to comply with (e.g., where use of MLS for a domain name might lead a consumer to believe that the website is the local MLS). But such a determination of whether a member’s use of MLS in a domain name is an ethical violation is ultimately left in the hands of the local associations – and thus decisions about use of MLS in domain names can vary by regional area and even on a case by case basis. In addition, the impact is felt mostly by members of the local association – real estate agents who choose not to be affiliated with NAR and the local NAR chapter or its MLS are not bound by NAR’s Code of Ethics or any local policy.

In the case of Rasmussen, there was an ethics panel decision by SAR which apparently found the he had not committed an ethical violation by the domain name registration. Interestingly, when Rasmussen attempted to enter this ethics decision into evidence before the UDRP panel, SAR cited a provision in NAR’s rules governing the ethics proceeding which apparently prevent Rasmussen from disclosing the ethics decision and or using the decision in an arbitration case.

Part of Rasmussen’s argument is that SAR does not have any valid rights to the mark Sarasota MLS. The website redirectes to SAR’s site at And while the website contains a small link at the top which reads “Sarasota MLS,” a click on the link leads to the current MLS to which Realtors in the Florida counties of Sarasota and Manatee use – the Mid-Florida MLS. SAR’s counterargument is that the Sarasota MLS does still exist and provides information to the Mid-Florida MLS.

While Rasmussen’s domain name is currently being forwarded to another domain name while the case is pending, his website still contains the disclaimer in bold that was on his previous site:

This is not the Sarasota Multiple Listing Service (MLS). The Sarasota MLS no longer exists. Realtors in Sarasota and Manatee counties now use the Mid-Florida MLS system. This website contains virtually all of the properties for sale in Sarasota and Manatee counties. There is no need to search multiple websites since this site is updated daily with almost every property for sale.

What may have given Rasmussen enough encouragement to file the federal action were the comments by the dissenting panelist in the UDRP action. That panelist felt that SAR had not established common law trademark rights to the MLS mark prior to the registration of the domain because SAR tended to use the MLS mark in a descriptive sense to identify the MLS database and not in a trademark sense, and never sought to protect the term as a mark until real estate agents began using the term in domain names. The panelist also felt that Rasmussen did not have the requisite bad faith needed under the UDRP, specifically noting the aforementioned advice to its members to register include the term “MLS” in their domain names in order to drive traffic to their sites (even though NAR later changing its policies about that). Finally, NAR’s own ethics decision declining to censure Rasmussen for this particular domain registration – even though the decision arguably should not have even been presented as evidence – nonetheless supported Rasmussen’s argument that he did not have any bad faith intention at the time he registered the domain name.

Wednesday, October 15, 2008

Producer of “Little House on the Prairie” Sues Kansas Museum for Trademark Infringement

Several news outlets reported yesterday (here and here) on the lawsuit filed in the U.S. District Court for the Central District of California by Friendly Family Productions, LLC (“Friendly”) – the production company behind the NBC television series Little House on the Prairie – against Little House on the Prairie Inc., the nonprofit group that runs The Little House on the Prairie Museum located just outside Independence, Kansas, alleging trademark infringement, unfair competition and trademark dilution. See Friendly Family Production LLC v. Little House on the Prairie, Inc., Case No. 08-cv-06602 (C.D. Cal. Oct. 7, 2008).

The museum is located on a small farm in Kansas where Laura Ingalls Wilder, the author of the book “Little House on the Prairie,” once lived from 1869 and 1871 and includes a replica of the family’s log cabin. The museum attracts 12,000 and 15,000 visitors each year and makes about $90,000 per year – enough to cover the museums expenses.

The replica of Laura Ingalls Wilder's family cabin.

The museum also happens to have two of its own registered trademarks for the mark LITTLE HOUSE ON THE PRAIRIE – one for various puzzles, toys, and games (claiming first use as early as December 1, 2004) and one for clothing (claiming first use as early as October 1, 2004).

Apparently, Friendly went after the museum after negotiations broke down between Friendly and a Minneapolis-based producer of a stage musical based on the “Little House” book. The producer raised concerns about finalizing a deal with Friendly because of the claims by the museum to own the name LITTLE HOUSE ON THE PRAIRIE.

Friendly supposedly offered the museum $40,000 to acquire the trademarks held by the museum and to change the name of its official website ( and its online store (, but the museum refused.

Friendly claims to have acquired the merchandising rights for the name "Little House on the Prairie" as well as the right to exploit the book on television, motion pictures and theme parks from Ingalls' heirs in a 1974 deal. However, it was only recently that Friendly bothered to even file applications to register its rights to the mark LITTLE HOUSE ON THE PRAIRIE. Having apparently been caught off guard by the museum’s trademark registrations, Friendly recently filed two of its own trademark applications for LITTLE HOUSE ON THE PRAIRIE for video recordings (claiming first use in 1981) and entertainment services, namely an ongoing television series (claiming first use back to March 1974). The applications have yet to be examined.

The lawsuit seeks to enjoin the museum from using the LITTLE HOUSE ON THE PRAIRIE mark as well as unspecified damages and the museum’s profits from use of the mark. While not mentioned in the articles, I would imagine that Friendly also seeks to cancel the museum’s two trademark registrations.

Monday, October 13, 2008

Cosmopolitan Loses "Reverse" Cybersquatting Claim But Trademark Infringement Claims Move On

I’ve previously written (here and here) about the lawsuits filed by 3700 Associates, LLC (“3700 Associates”) – the owner of the troubled (but still under construction) “The Cosmopolitan Resort & Casino” condo-hotel project in Las Vegas, Nevada – against a Florida domainer in a case that epitomizes reverse cybersquatting while at the same time exploring the boundaries of trademark law by claiming that a “web directory” website (those websites featuring a multiple click-through links) constitutes use in commerce for purposes of causes of action for trademark infringement and unfair competition (click here for previous blog entry on this type of trademark infringement litigation). Click here for Sept. 8, 2008 Las Vegas Sun article about the troubled project.

When we last left the story, 3700 Associates had its Nevada District Court case dismissed on jurisdictional grounds. 3700 Associates decided to refile its trademark infringement and cybersquatting lawsuit in Florida (to overcome personal jurisdiction problems) against Tim Griffin, Sr. and Griffin IT Median, Inc. (together “Griffin”) over Griffin’s ownership and use of the Internet domain name “” which Griffin registered on or about August 15, 2003 – approximately 16 months before 3700 Associates began using the mark “Cosmopolitan” in connection with its planned condo-hotel project. See 3700 Associates, LLC v. Griffin et al, Case No. 08-cv-80158 (S.D. Fla. Feb. 14, 2008).

On October 6, 2008, U.S. District Court Judge Donald M. Middlebrooks granted in part and denied in part Griffin’s Motion for Summary Judgment. See 3700 Associates, LLC v. Griffin et al, 2008 U.S. Dist. LEXIS 79721 (S.D. Fla. Oct. 6, 2008)

As one would expect given the timeframe in which Griffin registered the domain name compared to when 3700 Associates announced its intent to use the Cosmopolitan name, the court dismissed 3700 Associates’ cybersquatting claim. 3700 Associates attempted to argue that “the fact that Defendants registered the Domain Name a little over a year before Plaintiff began its COSMOPOLITAN Marks is of no consequence to the analysis of whether Defendants violated the ACPA.” Well, the court begged to differ:

Contrary to Plaintiff's assertion, I find that this is a critical fact. It is evident to me--and agreed by all parties--that Plaintiff's Marks did not exist at the time that Defendants registered the domain name in August, 2003. Plaintiff weakly proposes that “[a]t the time Defendants registered the [Domain Name at issue], 'Cosmopolitan' was distinctive as a mark for resort services.” See id. at P 16. However, I find this to be a conclusory assertion unsupported by the record. The term “Cosmopolitan” is a descriptive word meaning “international,” “multinational, or “sophisticated.” Clearly, the term itself is not distinctive or famous standing alone in the context of resort services; arguably, it is most distinct in another context, as the title of a woman's magazine. Moreover, even assuming that Plaintiff has developed the term such that it has become distinctive or famous with regard to its Marks and resort services, this has only occurred since February 2005, approximately 16 months after Defendants registered the Domain Name. To prevail on an ACPA claim, the Act plainly requires that the plaintiff's mark is “distinctive” or “famous” at the time of registration of the domain name. According to the parties' agreed-upon timeline, I find as a matter of law that Plaintiff cannot prevail on its ACPA claim. Simply put, at the time that Defendants registered the Domain Name, Plaintiff's COSMOPOLITAN Marks were not distinctive or famous because the Marks did not exist, and the term “Cosmopolitan” standing alone was not distinctive or famous in real estate services.

(footnotes omitted) (emphasis in original)

Unfortunately for Griffin, however, the court denied summary judgment on 3700 Associates’ federal and common law trademark infringement and unfair competition claims on the basis of too many issues of material fact in dispute.

3700 Associates argued that Griffin was attempting to trade on 3700 Associates’ goodwill by using the domain name to host a directory website containing multiple advertising links, with pop-up advertisements that redirected consumers to various other Las Vegas-oriented websites. Griffin countered that its website did not constitute “use in commerce” of the Cosmopolitan mark because it does not compete with Plaintiff for the sale of hotel, resort, or condo services.

The court stated that while the Eleventh Circuit has quoted another court's language that establishing a web page on the Internet satisfies the Lanham Act's “in commerce” requirement (see Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1195 (11th Cir. 2001) (quoting Planned Parenthodd Fed'n of Am., Inc. v. Bucci, 1997 WL 133313 (S.D.N.Y. 1997), aff'd, 152 F.3d 920 (2nd. Cir.), cert. denied, 525 U.S. 834 (1998)), the Eleventh Circuit has not yet “squarely” determined whether directory websites such as Griffin’s qualifies as a “commercial use” and other circuits have been split on the issue. As such, whether Griffin’s use of the domain name in connection with a web directory website constitute “use in commerce” remained an issue of material fact.

In addition, the court determined that there existed genuine issues of material fact as to whether 3700 Associates even possessed a valid mark for purposes of maintaining an infringement action against Griffin. While 3700 Associates attempted to argue that its COSMOPOLITAN marks were inherently distinctive, the court found that the evidence demonstrated that the marks were merely descriptive:

First, the words in the Marks consist of (1) “Cosmopolitan,” a term frequently used to describe a hotel or resort; and (2) “Resort and Casino” or “Resort Casino,” words that describe the goods that Plaintiff is providing. Second, evidence of myriad hotels and resorts around the world using the term “Cosmopolitan” indicates that the term is not a particularly innovative idea. Third, although not determinative, Plaintiff disclaimed the exclusive use of the terms in its trademark applications. Finally, Plaintiff has not had more than five years of continuous, exclusive use, as it first began promoting its resort hotel casino and condominiums in 2005.

(footnotes and citations omitted). As such, 3700 Associates faces the burden of showing evidence of secondary meaning prior to the date when Griffin began using its domain name (a date that also has yet to be ascertained) in order to maintain its infringement claims against Griffin.

The court did not even bother addressing likelihood of confusion given the other issues of material fact in dispute.

Friday, October 10, 2008

The Epic Battle Over the Patsy's Restaurants Comes To A Bitter (but Fair) End

I previously wrote (link here) about the long running dispute between Patsy's Pizzeria and Patsy's Italian Restaurant in New York City. On September 9, 2008, U.S. Magistrate Judge Ramon E. Reyes, Jr. issued a 72-page decision dealing with a flurry of post-verdict motions filed by each of the parties following the jury verdict earlier this year which found there was a likelihood of confusion between the two names. See Patsy's Italian Restaurant, Inc. et al v. Banas et al, Case No. 06-cv-05857, 2008 U.S. Dist. LEXIS 77802 (E.D.N.Y. September 9, 2008). Articles on the verdict can be found here and here. While the parties are likely to still file appeals to the Second Circuit Court of Appeals (after such a long battle, what’s another appeal to the Second Circuit in the grand scheme of things), the lengthy opinion is likely to be the ultimate end to this contentious battle between the Patsy’s.

In the end, the court ordered the two parties to use their full trade names going forward – both parties were enjoined from using the mark PATSY'S alone. In addition, the court, finding both parties to be partly at blame for the conflicting registrations (but also noting the careless manner in which the PTO handled the issue), put the parties back on an even playing field by ordering the PTO to cancel the registrations acquired by Patsy's Italian Restaurant for PATSY’S PR (stylized) (for restaurant services) and PATSY’S (for restaurant services not including pizza) and ordering the PTO not to restore the registration for PATSY’S PIZZERIA (for restaurant services) acquired by Patsy's Pizzeria.

The court added that with its decision the parties are free to seek new concurrent trademark registrations for the marks PATSY'S ITALIAN RESTAURANT and PATSY'S PIZZERIA and “strongly advised” them to fully acknowledge each other's existence and rights to the PTO, and that they should define as precisely and as narrowly as possible their own rights for services.

It deserves to be noted that Patsy's Italian Restaurant also was denied attorney's fees in the case despite a jury verdict of willful infringement -- the court did not find the case to be so exceptional as to jusify an award of attorney's fees becasue the victory was a minor one which paled in comparison to the claims on which Patsy's Italian Restaurant did not prevail.

What was most interesting about the opinion was the court’s eloquent expression of frustration and contempt towards the parties at wasting so much of time, money, and resources on a ridiculous case that should have been resolved with a coexistence agreement ages ago:

The Court ends by reproving the parties for what was been, in the end, wholly unnecessary and protracted litigation. As this Opinion and Order makes clear, both parties are to blame for what has transpired to date. The parties have expended an untold amount of money to litigate this action. They instead would have been well-advised to invest that money in their businesses. The Court is highly aware that Patsy's Italian Restaurant and Patsy's Pizzeria have each developed their goodwill through the sweat and labor of generations of restauranteurs. Patsy's Italian Restaurant and Patsy's Pizzeria are as much labors of love as they are businesses. However, it is the Court's sincere suggestion that the parties do not allow that love to blind them to the simple reality that there is plenty of room, and plenty of appetites in this world for Patsy's Italian Restaurant and Patsy's Pizzeria to exist and expand simultaneously and amicably.

Nicely put. And the same could be said for so much trademark litigation out there.

Wednesday, October 8, 2008

In the trademark world, it's all about timing.

As noted by Marty Schwimmer's Trademark Blog, it didn't take long for some enterprising individual to turn John McCain's questionable choice of words in reference to Barack Obama at last night's second Presidential debate into what could turn into a nice little business (for a few news cycles anyway). Nor did it take long for some creative individuals to put up a webpage and Facebook page in honor of "That One."

And it will probably comes as no surprise to discover in about two weeks that someone filed an application to register the mark "THAT ONE" for clothing within hours of the debate. Of course, I won't even get into the inevitable ornamental/decorative refusal such an application is likely to encounter.

Tuesday, October 7, 2008

Plaza Hotel & Casino loses lawsuit to stop Plaza Las Vegas

I previously wrote (link here) about the lawsuit between 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” over the rights to the name “Plaza” for a hotel-casino in Las Vegas.

As reported today by numerous news outlets (NYTimes as well as articles here, here , here, and here), a jury ruled on Monday in favor of El-Ad and against Tamares in its lawsuit to stop El-Ad from naming its planned $5 billion mega-resort “Plaza Las Vegas.” The news reports uggest that lawyers for El-Ad were successful in arguing that the Plaza Hotel & Casino failed to secure its rights to the “Plaza” name by operating under several other names during its history including Union Plaza and Jackie Gaughan's Plaza (as I noted in my own blog post).

Now the only thing standing in the way of El-Ad's planned mega-resort is the massive downturn in the economy and the freezing of the credit market. I wouldn't be surprised if El-Ad ends up scrapping its plans to build Plaza Las Vegas due to the inability to obtain the necessary financing as well as the outlook for the Las Vegas hotel and gaming market -- which will leave our downtown jewel of Glitter Gulch once again the one and only Plaza in Las Vegas.

Monday, October 6, 2008

Ron Riley Responds to Dozier Internet Law with Declaratory Judgment Action

I previously wrote (link here) about the “trademark infringement” lawsuit filed by Dozier Internet Law PC which essentially was a diatribe against well-known “patent expert” Ronald Riley (along with various other arguably-defamatory comments protected, of course, from claims of defamation by the litigation privilege) with some weak allegations of trademark infringement thrown in at the end which were directed at shutting down Riley’s Dozier-gripe site (although it now appears that these “trademark claims” were not necessarily intended to go after Riley directly, but rather attacked his website in a much more creative, yet sinister way described herein).

Well, the Riley/Dozier battle has moved to federal court with the filing of a declaratory judgment action by Ron Riley in the U.S. District Court for the Eastern District of Virginia against Dozier Internet Law and its principal, John Dozier. See Riley v. Dozier Internet Law, PC, Case No. 08-cv-00642 (E.D. Va. October 2, 2008). A copy of the complaint can be downloaded from Justia here. Public Citizen, representing Riley the action against Dozier, comments here.

In addition, the original state court action filed by Dozier Law has apparently been moved to federal court. See Dozier Internet Law, P.C. v. Riley et al, Case No. 08-cv-00643 (E.D. Va. October 2, 2008).

Riley’s declaratory judgment action seeks a declaration that Riley has not infringed any Dozier’s trademarks or defamed Dozier with his website. Riley also seeks injunctive relief to stop Dozier from claiming that Riley’s website constitutes defamation or trademark infringement and from threatening any internet service provider hosting Riley’s website with claims of contributory infringement or aiding and abetting.

Just as Dozier Law’s website may have shed some light on Riley’s background (even though those details were completely irrelevant to its claims for trademark infringement), Riley’s action sheds light on Dozier Law’s aggressive tactic of attacking gripe sites not by attacking the source of the speech, but rather by going directly to the website’s hosting company and, if necessary, the hosting company’s internet service provider. [Comment—Of course, Dozier’s aggressiveness described herein probably comes as no surprise from the law firm that claimed its “cease and desist” letter was copyrighted and therefore could not be legally posted online without their consent.]

When Riley first put up his website, it was hosted by an Atlanta, Georgia company named A Small Orange, which obtains its Internet access through a company named Global Net Access. On August 28, 2008, Dozier apparently wrote a letter to Global Net Access stating that Riley’s website was defaming Dozier and infringing Dozier’s trademark rights. Global Net Access then directed A Small Orange to remove Riley’s website, which it did forcing Riley to move his site to a second hosting company, pSek.

After Dozier filed his Virginia state action against Riley on September 4, 2008 (which apparently was never actually served on Riley or any of the Defendants mentioned in the complaint), Dozier sent copies of the lawsuit to pSek for the purpose of putting the company “on notice” of Dozier’s claims of trademark infringement and alluding to the possibility that pSek may be liable for “contributory trademark infringement, aiding and abetting, and conspiracy.” When pSek raised questions about Dozier’s claims, Dozier apparently came back with the threat that if pSek did not comply with his demands (uncertain, but likely the demand to remove Riley’s website), he would “escalate the matter up to” pSek’s internet service provider (just as he had done with A Small Orange in contacting Global Net Access). Dozier’s threats worked because pSek asked Riley to move his website.

Riley moved his web site once again to a new web hosting company, Hostgator. Soonafter Riley uploaded his site, Hostgator apparently notified Riley that his account was suspended because “It has come to our attention that you are using our services to infringe upon the trademark of another” (presumably from another letter from Dozier).

Of course, Dozier is careful to cast his claims in terms of trademark infringement so that his threats of liability against the hosting companies and internet service providers fall outside the scope of the immunity provided such internet service providers under the Communications Decency Act (47 U.S.C. § 230) which normally immunizes internet service providers from most claims of liability for content on websites that they host. In essence, Dozier has been able to quash Riley’s speech through his gripe site by taking advantage of the trademark immunity loophole of the Communications Decency Act to coerce the companies doing business with Riley into not allowing him to publish his expression.

Anybody else think Riley should find a web hosting company based outside the U.S. with no offices whatsoever in the U.S. and which relies upon a foreign internet service provider. Let’s see how much impact Dozier’s letters have in persuading a web hosting company based in China or India to take down Riley’s website.

Friday, October 3, 2008

Master P Sued by Pepe Jeans over “P”

A London jeans company named Pepe Jeans London LLC has filed a trademark infringement in the U.S. District Court for the Southern Distirct of New York against Percy Miller, Inc., the company through which famed gangsta rapper turned mulit-millionaire businessman Master P (real name Percy Miller) is producing his P. Miller Designs clothing line. The lawsuit also names Happy Nation Inc., the manufacturer of the clothing, and Wal-Mart Stores, Inc., the exclusive retail seller of the clothing line. See Pepe Jeans London, LLC. et al v. Percy Miller, Inc. et al, Case No. 08-cv-08311 (S.D.N.Y. Filed September 26, 2008); see also news reports here and here.

Pepe Jeans is claiming that its “P” logo is confusing similar to the “P” used in P. Miller’s logo (see above). One news report (link here) quotes Miller as saying that he looked on the Pepe Jeans website and could not find any use of P in a circle logo. Miller also claims to have used the letter "P" enclosed in a circle since 1989 [Query – for what goods and services?]

Be that as it may, Pepe Jeans does have registered U.S. trademarks for the below “P” logo for the various clothing items including jeans, shirts, and caps (registered in 1998 and claiming first use in 1995); Footwear; and various types of bags -- and the stylization of the Pepe Jeans “P” logo is strikingly similar to the one that P. Miller uses.

Miller, calling the allegations frivolous, stated the following (news report here):

"I make clothes for underprivileged and underserved families. P. Miller Designs is about diversity. We cater to the African-American and Latino customer. I'm doing something positive for the community and I'm giving back. What are they doing? Hating? I thought this kind of thing only happened in the rap game. I put out a charitable rap album last year, made no money on it, tried to send a message to the kids about taking profanity out of their music, and because it came through Wal-Mart, I was targeted with a lawsuit."

Miller, describing the lawsuit as David vs. Goliath, also stated that he intends to file a countersuit against Pepe Jeans for interference with contractual relations. [Comment -- Given that Miller is reportedly worth hundreds of millions of dollars, who exactly is the Goliath in this case?]

Wednesday, October 1, 2008

Exclusive Licensee of Red October Candy Loses Trademark Infringement Lawsuit Against Importer

An appropos court decision to start off this first day of October.

A New York district court has ruled against a U.S. importer of several well-known Russian candy brands who sued a competitor importing the same candy brands for trademark infringement. The court concluded that the company lacked standing to sue for registered trademark infringement and concluded that the importer’s sale of goods, because they were genuine goods, were protected by the exhaustion doctrine from claims of false designation of origin. See Krasnyi Oktyabr, Inc. v. Trilini Imports et al, Case No. 05-cv-05359, 2008 U.S. Dist. LEXIS 74125 (E.D.N.Y. September 25, 2008).

Krasnyi Oktyabr (“Red October”) is a Brooklyn-based importer and distributor of Russian candy sold under the brand names Krasnyi Oktyabr, Rot Front and Babayevsky. These brands of candy are produced by three separate Russian companies all of which are owned by the Russian holding company, Obeyediyonne Conditery (“United Confectioners”).

On April 9, 1996, Red October entered into a license agreement with Moscow Confectionary Factory of Krasnyi Oktyabr (“Red October Moscow”), one of the three United Confectioners subsidiaries, which granted Red October the “exclusive license” to use the Krasnyi Oktyabr mark in the U.S. Based on this exclusive right, Red October filed for and in 1999 and 2001 obtained U.S. trademark registrations for, respectively, the word mark KRASNYI OKTYABR and design mark KRASNYI OKTABYR, both for candy, chocolate, and toffee goods.

In April 2005, for reasons not entirely clear from the court’s opinion, Red October entered into another agreement with Rot Front, another one of the United Confectioners subsidiaries – supposedly acting on behalf of United Confectioners – wherein Red October agreed to assign its rights to the “Krasnyi Oktyabr” trademarks to Red October Moscow and which purported to grant Red October the exclusive right to sell the Krasnyi Oktyabr, Rot Front, and Babayevsky brands of candy to the “Russian Ethnic Market” in the United States.

On or about April 5, 2005, Trilini Imports (“Trilini”), a New-York based importer of Russian goods, began importing into the U.S. the same three brands of Russian candy sold by Red October – having purchased the goods from third party Russian distributors who had obtained the candy directly from United Confectioners. Trilini continued to sell the candy despite receiving notice from United Confectioners in September 2005 that Trilini was not allowed to sell the three brands of candy for which Red October had the exclusive right to sell in the United States.

In November 2005, Red October filed suit against Trilini alleging trademark infringement and the usual supplemental state and common law claims. Trilini filed its own counterclaims for abuse of process, fraud, anti-trust violations, and tortious interference with prospective business relations. On cross-motions for summary judgment, the district court ruled in favor of Trilini with respect to Red October’s claims and ruled in favor of Red October on Trilini’s counterclaims. The court also lifted the previously imposed injunction against Trilini preventing it from selling its imported candy.

In his opinion, U.S. District Court Judge David Trager concluded that Red October lacked standing to bring an action under Section 32 of the Lanham Act (15 U.S.C. §1114) for infringement of the registered “Krasnyi Oktyabr” trademarks because Red October could not show that United Confectioners had been damaged by Trilini’s actions, and thus could not be acting as a “legal representative” of United Confectioners in the case. Furthermore, even if Red October could prove that United Confectioners had been damaged by Trilini’s actions, Red October could not show why United Confectioners was unable to participate in the litigation. Red October attempted to argue that Trilini’s actions could hurt its exclusive rights to sell the candy in the United States; however, the court noted that in the very same agreement which gave Red October that exclusive right to sell, Red October not only assigned over to United Confectioners its rights to the Krasnyi Oktyabr marks, but also assigned all potential infringement claims arising from such marks. As such, Red October had nothing which proved that it had any kind of exclusive enforcement rights to the Krasnyi Oktyabr marks that would grant it standing to sue under §1114.

With respect to Red October’s claim for false designation of origin under Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)), while the court found that Red October did have standing to bring this claim, the court held as a matter of law that there was no likelihood of consumer confusion because the goods were genuine goods from United Confectioners, and thus were protected by the exhaustion doctrine (or first-sale doctrine) which protects a party from claims of trademark infringement for the unauthorized sale of genuine trademarked goods. Red October attempted to argue that Trilini’s imported candy was not genuine because it was not subjected to the same quality controls standards as the candy imported by Red October. However, the court found that Red October lacked any evidence of specific quality control standards that differed between its imported candy and Trilini’s imported candy.

The court then proceeded to summarily dismiss the remainder of Red October’s claims for common law unfair competition, deceptive trade practices under New York law (N.Y. Gen. Bus. Law § 349), false advertising under New York law (N.Y. Gen. Bus. Law § 350), dilution under New York law (N.Y. Gen. Bus. Law § 360-l), and tortious interference with prospective business relations. The court also dismissed Trilini’s counterclaims for abuse of process, fraud on the USPTO, violation of anti-trust laws, and tortious interference with prospective business relations -- all primarily due to the lack of any evidence proving the necessary elements on those claims.