Tuesday, February 17, 2009

Mélange of Trademark Stories

Gummy Bears Battle
The owner of the registered mark GUMMY BEARS (for Bracelets, Charm Danglers, General Jewelry as well as Toys and playthings, namely, board games, stuffed animals, infant toys, and musical toys) which also has a variety of other pending trademark applications filed a lawsuit against New Jersey-based Gummy Bear International (“GBI”) for using the mark in connection with the sale of music videos, animation, ringtones, mp3s, posters, stickers, and other goods (and which has its own pending applications for GUMMIBÄR and GUMMY BEAR). Of course, don’t be confused – this has nothing to do with the GUMMI BEARS candy made by Haribo of America, Inc., which owns the registered mark THE ORIGINAL GUMMI-BEARS).

Intel Attacks NETBOOK
Intel is seeking a declaratory judgment (complaint here) that the registered mark NETBOOK (registered by a Canadian company) is generic for laptop computers. Intel received a cease and desist letter from the registrant (Psion Teklogix, Inc.) on December 22, 2008 (a letter which allegedly was sent out to numerous other well-known names like Dell, HP, and Best Buy).

Intel currently owns the domain name http://www.netbook.com/, which is directed to a page for Intel’s ATOM processor for notebook computers. Intel alleges that the Section 8 Declaration filed in 2006 by Psion was fraudulent because it claimed continued use of the mark in commerce by submitting a specimen of a notebook computer that had been discontinued in 2003. Intel also cites numerous other third party uses of the term “netbook” in connection with laptop computers. Psion also apparently filed Google Adword complaints with Google regarding any purchase of the adword “network” including ads purchased by Google using the term.

Nordstrom Seeks to Resolve BECKONS dispute
The press surrounding the efforts by Nordstrom to seek cancellation of the mark BECKONS and the subsequent roar of outrage from the legal blogosphere could have sparked an actual resolution. Nordstrom VP of corporate communications Brooke White, in an e-mail to Information Week’s Global CIO Weblog, stated

Our intention from the beginning was to co-exist with Beckons in a manner that would enable Beckons to use their trademark on yoga merchandise, while we used the Beckon name for fashion apparel and accessories. We never intended to adversely affect Ms. Prater's business and we are sorry if this has happened. We are reaching out again to Ms. Prater's attorneys to reach a settlement that we are hoping she will find acceptable.

The Global CIO Weblog postings can be read here. (HT: Michael Atkins for his coverage).

Of course, unlike what happened in the case of MONSTER GOLF (blogged here), there does not seem to be any kind of outreach (yet) to help pay for Ms. Prater’s legal fees arising from this mess. However, given Nordstrom’s willingness to work out a coexistence agreement, if Ms Prater is unwilling to coexist in the way described by Nordsrom, is Nordstrom still the bad guy should it decide to proceed with its cancellation proceeding?

Blockshopper and Jones Day Settle
Several media stories and bloggers (here, here, here and here) reported on the unfortunate settlement by Blockshopper of the frivolous Jones Day trademark infringement lawsuit (previously blogged here, here, and here) – after accumulating over $100,000 in legal fees fighting the lawsuit.

Jones Day is apparently ok with BlockShopper publishing links to Jones Day as long as they are not “embedded links” and instead place the full web address next to references to the firm. For example, instead of writing something like “Jones Day’s frivolous and abusive lawsuit was brought by Paul W. Schroeder, Irene S. Fiorentinos, Meredith M. Wilkes, Robert P. Ducatman, and James W. Walworth Jr”, Blockshopper would instead have to write it as “Jones Day’s (http://www.jonesday.com/) frivolous and abusive lawsuit was brought by Paul W. Schroeder (http://jonesday.com/pwschroeder/), Irene S. Fiorentinos (http://jonesday.com/ifiorentinos/), Meredith M. Wilkes (http://jonesday.com/mwilkes/), Robert P. Ducatman (http://jonesday.com/rducatman/), and James W. Walworth Jr (http://jonesday.com/jwwalworthjr/).” Blockshopper has restored the links to the condos purchased by the Jones Day associates at issue. Blockshopper will now also have a page which explains why Jones Day gets treated so special and which describes the lawsuit.

So given the end result and the negative publicity that has been brought to the precious “Jones Day” name, one must really ask -- was it really worth bringing in the first place?

1 comment:

jonat said...

Hello everyone
Just recently I have discovered that this BS company is putting my name and address online without any authorization, now anyone with google can find my name from my address and vice versa. i have contacted them to remove the info but they declined forcing me to move on to the next step ie file an official complaint. Anyone had this problem too?