Friday, July 31, 2009

Woman Sues Sirius-XM over SUNDAY BAROQUE

The Connecticut Post reports (link here) on the trademark infringement lawsuit filed by an Ohio woman named Suzanne Bona-Hatem against satellite radio company Sirius-XM over the use of the mark SUNDAY BAROQUE for a radio music show featuring guess what kind of music which can be heard on guess what day of the week?

Bona-Hatem’s “Sunday Baroque” show is a four-hour syndicated Sunday morning program which is broadcast to over 90 stations and heard in over 30 states to an audience of 2.7 million people (according to the suit)

In addition, Bona-Hatem was able to procure her a trademark registration for the mark SUNDAY BAROQUE for “Entertainment in the nature of on-going radio programs in the field of Baroque music” from the U.S. Patent and Trademark Office (“PTO”). Of course, it was only after she first disclaimed the descriptive word “Baroque” from her mark. Moreover, anticipating an obvious descriptiveness refusal by the PTO, the application was initially filed with a claim of Section 2(f) acquired distinctiveness on the basis of Bona-Hatem’s claimed exclusive and continuous use in commerce of the mark for at least the five years prior to making the claim of acquired distinctiveness. The PTO did not raise any questions about her Section 2(f) claim or request any additional evidence to prove her acquired distinctiveness claim.

The lawsuit alleges that Sirius-XM is broadcasting a similar baroque show on Sunday – and using a name that is identical to her mark (although one wonders how you might describe a baroque radio show broadcast on Sundays without using some semblance of her mark).

While one wonders why Sirius-XM didn’t just change the name of its show in response to correspondence from Bona-Hatem’s attorney. After all, she cannot really prevent anyone from using the term Baroque in connection with playing Baroque music – and do you really have to use the word Sunday as part of the program title?

Of course, from Sirius-XM’s perspective, while Bona-Hatem may have a trademark registration for SUNDAY BAROQUE, can she really prevent other radio programs from using the words SUNDAY and BAROQUE in their descriptive sense when broadcasting a baroque music radio show on Sunday (i.e., would “Sunday Morning Baroque” or “Baroque on Sunday” be considered by Bona-Hatem confusingly similar?).

So who do you think is in the right here? Is Bona-Hatem’s trademark so ridiculously descriptive that she should not be allowed to claim any exclusive rights to the term SUNDAY BAROQUE in connection with a baroque radio show broadcast on Sunday? Or is Sirius-XM being ridiculous in not taking the simple step of simply renaming the show (is calling the show by the boringly descriptive “Sunday Baroque” so important that its willing to go to court over it)?

Wednesday, July 29, 2009

AAA loses UDRP action to obtain

DomainNameWire reports on the UDRP divided panel decision denying the request by the American Automobile Association, Inc. (“AAA”) to obtain the domain name (HT: See The American Automobile Association, Inc. v. QTK Internet c/o James M. van Johns, FA0905001261364 (Nat. Arb. Forum July 25, 2008).

The decision is an interesting one in that it goes against the position of many trademark owners seeking to obtain a domain name under the UDRP that a pay-per-click advertising site cannot give rise to a legitimate claim to a domain name. The panel made clear that it was rejecting the argument that pay-per-click advertising is per se illegitimate and that whether the advertising is a bona fide offering of goods or services instead turns on whether the domain name owner is exploiting the trademark owner’s trademark by offering advertisements that confuse Internet users for commercial gain.

And in this case, the panel concluded that the domain name owner’s pay-per-click advertising was a bona fide offering of goods or services under the UDRP rather than an illegitimate exploitation of consumer confusion. The panel noted that the desirability of this particular three letter domain name (AAA is a top rating for a bond, a battery, a shoe size, and an acronym associated with many different organizations). The domain name is also a short, three-letter string. Kis v. Ltd., D2000-0770 (WIPO Nov. 20, 2000) (recognizing the value of a three-letter domain name). Thus, the domain name owner may have registered for any of a number of reasons that have nothing to do with AAA’s business

Also important to this panel’s decision was that the pay-per-click advertisements were generally not related to any goods or services associated with AAA’s mark:

While [AAA] has found among the sea of auto-generated advertisements some related to its business, these appear to be few, and do not seem likely to create or exploit consumer confusion, and on this record could plausibly have been inadvertent. . . . Because such advertisements are auto-generated and rare, they do not appear to be targeted at [AAA’s] mark. The lack of targeted advertisements combined with the fact that is a desirable domain name for reasons unrelated to Complainant’s business suggest that Respondent’s pay-per-click advertising is a bona fide offering of goods or services.

And so the panel, by a vote of 2-1, refused to order the transfer of the domain name to AAA.

So does this decision represent a turn in the thinking of UDRP panelists regarding the business model of pay-per-click advertising? Based on the separate dissent filed by the lone dissenting panelist -- who made his disdain for the pay-per-click advertising business model quite clear -- there might still be some UDRP panelists that need some convincing:

Respondent’s business model is to take generic words and/or letter combinations and to register them as domain names. Once someone wants to acquire the domain name, Respondent will sell it (presumably at a profit, otherwise Respondent could not stay in business). This Panel believes such practices were intended to be prohibited by the policy, even though this case is a close call.

Friday, July 24, 2009

New York Federal Court Grants Preliminary Injunction in JAPONAIS Trademark Dispute

I have previously written (link here) about the ongoing dispute between Roy Tuccillo and Geisha NYC, LLC (“Geisha NYC”) over the restaurant name “Japonais” (the “JAPONAIS mark”). In short, Geisha first opened its “Japonais” restaurant in Chicago in 2003. However, due to an oversight on the part of Geisha in not seeking to register its trademark with the USPTO right away, Tuccillo was able to file an intent-to-use trademark application in 2004 for the identical JAPONAIS mark before Geisha NYC had the chance to file its own registration application. Tuccillo’s application ultimately registered in March of this year. Tuccillo filed an action against Geisha for trademark infringement, and Geisha came back with counterclaims for cancellation of Tuccillo’s registration as well as trademark infringement.

On July 22, 2009, a federal court judge in the Eastern District of New York, in a very comprehensive and detailed opinion (and one that holds back no punches against Tuccillo), granted Geisha’s motion for preliminary injunction to enjoin Tuccillo from using the name “Japonais” in connection with restaurant and lounge services after finding a likelihood of success on the merits of Geisha’s counterclaim to cancel Tuccillo’s trademark registration on the basis of fraud. A copy of the court’s decision can be downloaded here. (HT: Marty Schwimmer).

In short, the court found Tuccillo’s evidence and testimony “incredible” (and not in the good way). In particular, the court did not believe Tuccillo’s claims that he was unaware of anyone else using the JAPONAIS mark when he filed his application in June 2004 . The court also found his statements for why he decided to use the word “Japonais” or how he developed the particular stylized lettering in his application completely lacking in credibility – and not helped out by the fact that there was evidence that he had copied and tried to register a different company’s unique logo as well.

Moreover, Tuccillo claimed in May 2008 that he had been using the JAPONAIS mark since April 1, 2008, in connection with restaurant and lounge services – a claim that the court found completely undermined the lack of any advertising, the lack of any sales records attributable to the restaurant, the lack of any health department permit, the fact that the telephone number listed on the menus were for Tuccillo’s “frozen food” business, and pictures showing that on March 23, 2009, at a time when the restaurant was purportedly open for lunch, there was a closed sign out on the front door with no employees and no food in sight.

All of this evidence paled in comparison to the evidence submitted by Geisha demonstrating the creation and development of the JAPONAIS mark in 2003 in connection with its Chicago restaurant, the subsequent opening of restaurants in New York City and Las Vegas in 2006, and Geisha's expert witness testimony that Tuccillo could not have created the JAPONAIS mark in the manner in which he stated he did.

In sum, the court agreed that the evidence supported the argument that Tuccillo submitted the trademark registration application for the identical JAPONAIS mark created by Geisha in a bad faith effort to “squat” on the mark in order to capitalize on Geisha’s failure to register the mark. And thus, Geisha demonstrated a likelihood of success on its counterclaims for cancellation of Tuccillo’s registration of the JAPONAIS mark based on Tuccillo’s false statements to the USPTO claiming to be the senior user of the mark.

Wednesday, July 22, 2009

Las Vegas Tropicana Hotel & Casino Files Nevada State Court Declaratory Relief Action to Keep Using the TROPICANA Name

Las Vegas Sun reporter Steve Green reports (link here) on the brewing internal battle over the TROPICANA name.

It is a complicated story arising from the bankruptcy and reorganization of the company that owned Tropicana casinos in Las Vegas, Atlantic City, and throughout the United States and involving the competing interests of two different credit facilities. As part of the reorganization plans, one of the spun off companies received ownership of the “Tropicana” name while a second company, the one that would take over the actual Tropicana Hotel and Casino in Las Vegas (“TropicanaLV”), would be required to pay an annual license fee of $2 million to keep using the “Tropicana” name for the next five years.

The company that apparently now owns the TROPICANA trademarks and service marks (Tropicana Entertainment Holdings, LLC) recently filed two trademark applications for the design mark THE TROP LAS VEGAS EST. 1957 (pictured below) for casino services and for hotel, bar, and restaurant services.

Tropicana Las Vegas (est. 1957)

TropicanaLV – the “Tropicana” that was established in Las Vegas in 1957 – sees these trademarks filing as a threat in that it believes that the company which received the TROPICANA name in the reorganization is planning to eventually cut off TropicanaLV’s right to use the name TROPICANA. And so TropicanaLV is fighting back with a lawsuit in Clark County District Court seeking a declaratory judgment that TropicanaLV continues to have rights to use the TROPICANA name in connection with its hotel and casino (and indeed never even transferred those rights over).

Of course, because the mess is still in the jurisdiction of the bankruptcy court, Tropicana has filed a motion with the Delaware bankruptcy court to get confirmation that its lawsuit is not subject the stay or to ask that the stay be annulled for such action.

The history of the Tropicana and the details behind the 2008 bankruptcy and reorganization detailed in the complaint make for some great reading (for those of you interested in that sort of thing).

The Las Vegas Review Journal has its own article on the dispute (link here).
Update: Pamela Chestek over at Property, intangible provides her own detailed and insightful analysis of the dispute.

Monday, July 20, 2009

Incorp Services Sues Nevada Corporate Services for False Advertising

I previously wrote (link here) regarding the lawsuit filed by Incorp Services, Inc., (“Incorp”), a corporate formation company which also offers registered agent services for business entities nationwide, against over some allegedly false statements being made by Legalzoom representatives about Incorp’s registered agent services. That case ultimately was settled by the parties.

On Friday, Incorp filed another action to fight against what it describes as false statements made by another competitor – Nevada Corporate Services, Inc. (“NCS”). See Incorp Services, Inc. v. Nevada Corporate Services, Inc., Case No. 09-cv-01300 (D. Nev. July 17, 2009). A copy of the complaint can be downloaded here.

Incorp claims that NCS sent out a letter in May to many of Incorp’s clients claiming that Incorp “may be discontinuing its services” and that such discontinuance of services may leave the client “vulnerable and at risk.” The letter supposedly included some criticisms about registered agent services and insinuating that such statements were about Incorp. Finally, the letter stated that Incorp’s clients may be “victimized by a lack of service and professionalism” by Incorp, that they may be “devastated by” and opened up to “strategic vulnerabilities” by Incorp’s failure to fulfill its statutory duties.

Incorp argues that NCS’s statements are false and defamatory, have caused Incorp immediate and irreparable harm, and were sent out knowingly, willfully, maliciously, and with the intent to harm Incorp. Incorp’s causes of action are for false advertising under 15 U.S.C. §1125(a) and defamation.

July 21, 2009 Update: Las Vegas Sun reporter Steve Green also reports (link here) on the lawsuit filing along with some interesting background regarding past litigation involving Incorp.

Tuesday, July 14, 2009

Wynn Resorts Files Declaratory Judgment Action Over XS

On July 13, 209, Wynn Resorts Holdings, LLC (“Wynn Resorts”), the sole member of Wynn Las Vegas, LLC, which owns and operates the Wynn Las Vegas casino hotel and resort, filed a declaratory judgment action against NYLO Hotels, LLC (“NYLO”), in the U.S. District Court for the District of Nevada. See Wynn Resorts Holdings, LLC v. NYLO Hotels, LLC, Case No. 09-cv-01258 (D. Nev. July 13, 2009). A copy of the complaint can be downloaded here.

For those outside Las Vegas, the Encore Las Vegas is the latest hotel project by well-known hotel/casino developer Steve Wynn. As part of Encore, Wynn decided to develop a restaurant/bar/nightclub named XS. And as any good businessman does, Wynn filed for trademark protection for the mark XS (one application for night club services and one for restaurant and bar services – both filed February 4, 2008).

Wynn’s applications hit an initial stumbling block when its applications were rejected on the basis of likelihood of confusion over the registered (and incontestable) mark XS owned by XS Entertainment, Inc. ( for “entertainment in the nature of indoor and outdoor amusement complexes” and “restaurant services, namely, restaurant and bar services.”). The same office action noted that there was one other pending intent-to-use trademark application for XS filed by NYLO with an earlier effective filing date.

Wynn was able to overcome the likelihood of confusion rejection by simply acquiring the registered mark from XS Entertainment, Inc. (with all of its correspondence goodwill of course) Of course, if XS Entertainment knew that it was Wynn seeking the mark, XS Entertainment might jack up the price – and so Wynn had The Treadstone Group acquire the mark on July 18, 2008 on Wynn’s behalf and The Treadstone Group subsequently assigned the mark to Wynn on July 31, 2008 (click here for the PTO’s Assignment Records). Wynn subsequently renewed the registered mark on November 28, 2008 (with specimens showing the mark used in connection with the XS nightclub). [Comment: One wonders how much goodwill there was for Wynn to acquire along with the actual trademark registration?]

Of course, Wynn’s acquisition only allowed it to overcome half of the trademark battle. With Wynn owning the registered mark that was owned by XS Entertainment, Inc., the PTO still suspended prosecution of Wynn’s two pending applications pending the outcome of NYLO’s earlier filed intent-to-use application.

On April 22, 2009, NYLO sent a cease and desist letter to Wynn demanding that Wynn stop using the XS mark (and dropping the hint that it would be willing to discuss licensing opportunities). Wynn’s counsel responded to NYLO noting Wynn’s ownership of a trademark registration for XS as well as Wynn’s actual use in commerce of the XS mark (compared to NYLO’s pending intent-to-use).

NYLO’s counsel wrote back to Wynn on May 28, 2009, reiterating its demands that Wynn cease and desist and claiming that Wynn’s trademark registration for XS was invalid on the basis that a) when the registration was renewed, it was not being used for “indoor and outdoor amusement complexes” b) the original application was impermissibly broadened to include “bar services” and c) that the mark had been abandoned by XS Entertainment. NYLO argues that Wynn’s only rights are its common law rights acquired through its actual use of the XS mark in January 2009 – long after the constructive use date of NYLO’s application [ed.—and after Wynn had actual notice of NYLO’s pending intent-to-use application].

Based on this “reasonable apprehension” that Wynn is violating NYLO’s trademark rights and that NYLO will pursue injunctive relief against Wynn – when and if NYLO’s pending trademark application is ever registered – Wynn filed for a declaratory judgment that its use of XS is lawful and does not violate NYLO’s rights.

Of course, the big question here is how could NYLO have gotten its own XS trademark application approved by the PTO in light of the existing XS registration where there was a clear overlap of services in the area of “restaurant services.”

Looking at NYLO’s lengthy list of services, does Wynn have a possible argument that NYLO lacked a bona fide intent to use the mark in connection with all of the services described? After all, NYLO is still on its third extension of time to file a statement of use. Does NYLO have the business plan materials to show a bona fide intent back to when it first filed the application? We shall see.

Steve Green with the Las Vegas Sun, an avid trademark lawsuit watcher, has his own article on the lawsuit (link here).

Monday, July 13, 2009

Rosetta Stone Files Adword Infringement Lawsuit Against Google

After going after several third parties for purchasing Rosetta Stone’s trademarks as Google Adwords (see prior blog posts here and here), Rosetta Stone decided to go straight to the source and join the bandwagon of Google Adword trademark infringement lawsuits by filing its own action against Google in Virginia District Court over Google’s use and sale of Rosetta Stone’s trademarks as Google Adwords to third parties. See Rosetta Stone LTD v. Google Inc., Case No. 09-cv-00736 (E.D. Va. July 10, 2009). A copy of the complaint can be downloaded here.

Eric Goldman’s Technology & Marketing Law Blog provides an insightful analysis of the complaint and adds the case to his growing list of Google Adword lawsuits that he is tracking.

Thursday, July 9, 2009

Mary Kay Cosmetics Sues Yahoo Over “Yahoo Shortcuts” Feature In E-mails

Both Mediapost and TheDomains have stories today about the trademark infringement filed by Mary Kay Cosmetics against Yahoo. See Mary Kay Inc. v. Yahoo! Inc., Case No. 09-cv-01278 (N.D. Tex. July 6, 2009).

The crux of the complaint is over the “Yahoo Shortcut” feature of Yahoo’s e-mail services whereby certain keywords in a particular user’s yahoo e-mail are highlighted and by scrolling the cursor over the text of the keywords a pop-up window appears which contains the search results generated by that particular term as searched through various types of integrated searches including Yahoo’s basic web search,, Wikipedia, and, as was apparently the case case here, “Shopping Offers.”

From Mary Kay’s perspective, an e-mail sent by an authorized May Kay representative to a customer using Yahoo’s e-mail is being “hijacked and manipulated by Yahoo and provide an unfair advantage for the unauthorized re-sellers and other competitors.” [Comment: hijacking and manipulating might be a little strong.]

One interesting point is the argument that e-mail recipients might "mistakenly believe that the hyperlinks and pop-ups which include ads associated with the Mary Kay marks were affirmatively included or authorized by either Mary Kay or the Independent Beauty Consultant sending the email." Of course, isn’t this only true for a short period of time during which yahoo e-mail users learn about the function and after which, they will clearly recognize it for what it is – a quicklink for Yahoo search engine results? After all, is there anybody out there who is truly confused anymore by the Google search engine results that appear at the top in the highlighted area that reads “Sponsored Links”? And don’t most internet users today recognize after typing (or mistyping) a particular domain name thinking that it is the website for the brand they are looking for only to find the standard landing page with click-through links that the page is simply not the page they were looking for and then simply brings up a new web browser page to use one of the major search engines to find the brand for which they were looking?

Of course, Mary Kay’s action suffers the same uphill battle as any of the “Google adword” trademark infringement cases. Indeed, Yahoo’s popup function appears to be nothing more than an interface that allows a user to see certain search engine results (Yahoo’s or otherwise) for a particular term in a pop-up screen. So is having the link in the e-mail what is really bothering Mary Kay – or is it the search results themselves? And as noted in one of the articles, while Mary Kay complains about “unauthorized resellers,” some of the products being sold may be authorized products that were properly purchased and being resold (in which case the use of the Mary Kay name in reselling them is not trademark infringement).

So let the Yahoo Shortcut based trademark infringement lawsuits begin. Can a “Yahoo E-mail Shortcut” class action lawsuit be far behind? Anything can happen in Texas!!!

Tuesday, July 7, 2009

Las Vegas Review Journal Article Spotlights Local Man’s Trademark Battle in England

This makes two posts in a row regarding trademark battles outside of the United States.

The Las Vegas Review Journal ran a story today (link here) about Las Vegas exporter Panch Prasad whose company, U.S. International Trading Corp., is the owner of the DuBarry brand of cosmetics which it purchased in 1997. The brand is described as the first American brand of cosmetics established in 1903 named by its founder, Richard Hudnut, after Comtesse Jeanne du Barry, the mistress of King Louis XV of France who killed by guillotine in 1793 during the French Revolution.

Prasad was apparently contacted in 2007 by a Englishman name Michael Miller who said he had investors who could help expand the sales of DuBarry in the U.K. Prasad later discovered that on June 13, 2007, Miller (through the company The Dubarry Perfumery Company Limited) went ahead and filed an application to register the mark DUBARRY in the United Kingdom. Prasad’s company already owned a UK registration for the mark DUBARRY ALL CLEAR (for Non-medicated toilet and cosmetic preparations) dating back to 1963, but that apparently was not enough for the UK Intellectual Property Office to refuse registration of Miller’s application.

Prasad filed a timely opposition to registration, but the article highlights the ever growing cost of the legal battle to protect his brand ($35,000 in legal fees so far). The article also focuses on the problems faced by exporters who sell their products in foreign countries without first securing trademark protection for their brands and the systems in place to allow trademark holders to protect their marks worldwide such as the Madrid System for the International Registration of Marks administered through the World Intellectual Property Organization or the Community Trade Mark system administered through the Office for Harmonization in the Internal Market (Trade Marks and Designs).

Indeed, earlier this year, Prasad’s company filed a Community Trade Mark Application for the DUBARRY mark, which if it registers will protect the name throughout the European Union (including the U.K.). But as noted by Prasad (who claims to spend $15,000 to $20,000 a month on attorneys to protect 100 trademarks worldwide), it’s not enough to obtain trademark registration protection for your brands – you have to continuously monitor the marketplace to ensure that there are no other companies attempting to infringe on and/or take advantage of the reputation and goodwill of those brands.

Monday, July 6, 2009

James Bond fails again to defeat DR. NO European Union trademark application

While my primary focus is typical on news and decision related to U.S. trademark law, I’m making a exception given that the subject matter of this ongoing Community Trade Mark dispute involves James Bond.

Danjaq LLC (“Danjaq”), the company which owns all of the intellectual property rights associated with the famed JAMES BOND movie franchise, has lost another round in its ongoing opposition battle against a German Company seeking to register the mark DR. NO with the Office for Harmonization in the Internal Market (Trade Marks and Designs) (“OHIM”) ), the body in charge of registering Community Trade Marks valid throughout the European Union. See Danjaq LLC v. OHIM et al, Case T‑435/05 (Ct. First Instance June 30, 2009).

The Court of First Instance affirmed the decision by the lower OHIM tribunals to dismiss Danjaq’s opposition on the basis that Danjaq had not proven that the name DR. NO had been used by Danjaq as a trademark (i.e., source identifier) prior to the filing date of Mission Productions’ application.

On June 13, 2001, Mission Productions filed an application (No. 002256378) to register the mark DR. NO with the OHIM. The goods for which registration was sought were in five different classes:

– “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; electric and/or electronic apparatus and instruments (included in class 9); apparatus for recording, transmission or reproduction of sound and/or images and/or electronic data; magnetic data‑carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire‑extinguishing apparatus; data carriers of all types containing programs, software programs, recorded sound carriers, recorded image and sound carriers”, in Class 9;
– “Vehicles; apparatus for locomotion by land, air or water”, in Class 12;
– ‘”Leather and imitations of leather, and goods made of these materials (included in class 18); animal skins; trunks and travelling bags; luggage; umbrellas, parasols and walking sticks; whips, harness and saddlery”, in Class 18;
– “Clothing, footwear, headgear”, in Class 25;
– “Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages”, in Class 32.

Danjaq filed an opposition on April 26, 2002 arguing a likelihood of confusion with its earlier unregistered mark DR. NO used in connection with the James Bond film the same name.

The OHIM’s Opposition Division rejected that opposition on September 28, 2004, holding that Danjaq had not proven that the DR.NO Mark was well-known or had been used as a mark in commerce. Danjaq filed a notice of appeal of the Division’s decision, but the Board of Appeal dismissed the appeal on September 21, 2005, and affirmed the Division’s position.

Danjaq appealed the decision to the Court of First Instance. On June 30, 2009, the Court of First Instance affirmed the decisions below.

The primary issue was whether Danjaq, in promoting the first James Bond film “Dr. No,” had used the mark DR. NO as a trademark prior to the filing date of Mission Productions’ application.

The court found that Danjaq had not:

[I]n the present case, an examination of the documents submitted by the applicant shows that the signs Dr. No and Dr. NO do not indicate the commercial origin of the films, but rather their artistic origin. For the average consumer, the signs in question, affixed to the covers of the video cassettes or to the DVDs, help to distinguish that film from other films in the ‘James Bond’ series. The commercial origin of the film is indicated by other signs, such as ‘007’ or ‘James Bond’, which are affixed to the covers of the video cassettes or to the DVDs, and which show that its commercial origin is the company producing the films in the ‘James Bond’ series. Moreover, even if the profits that the film Dr. No had generated within the Community are capable of showing the commercial success of the film in that territory, the fact remains that they cannot show that the signs in question are used as indicators of commercial origin.

In addressing Danjaq’s use of DR.NO on comic books, music recording, books and posters, the court stated the following:

In the case of comic books, music recordings, books and posters, the signs Dr. No and Dr. NO are likewise not used as trade marks, but as a reference which is descriptive of the goods, indicating to consumers that they are music from the film Dr. No, a book or a comic book about the character of ‘Dr. No’, or a poster of that film or character. As is apparent from examining the documentation supplied by the applicant, some of the goods referred to are marketed to the public under other indicators of origin, namely ‘007’ and ‘James Bond’, which indicate to consumers that the commercial origin of the abovementioned goods relating to the film or the character of ‘Dr. No’ is the same as that of the films in the ‘James Bond’ series.

Danjaq also was not able to prove that any of the items that they claimed evidenced use of DR. NO as a mark had been put on the European market before the filing date of Mission Productions’ application.

Because the DR. NO mark could not be established by Danjaq as having been used as a source identifier, the court did not regarding them as having been well-known trademarks in any EU Member State within the meaning of Article 8(2)(c) of Regulation No 40/94 and Article 6 bis of the Paris Convention.

Finally, Danjaq tried to make the argument that Danjaq’s DR. NO title could still serve as grounds to oppose registration of the confusingly similar mark by Mission Productions. Under Article 8(4) of Regulation No 40/94, the existence of an earlier non‑registered trade mark or a sign other than a trade mark gives good grounds for opposition if the sign satisfies the following conditions: it is used in the course of trade; it is of more than mere local significance; it confers on its proprietor the right to prohibit the use of a subsequent trade mark; rights to the sign in question were acquired, pursuant to the law of the Member State in which the sign was used, prior to the date of application for registration of the Community trade mark

Unfortunately for Danjaq, the court found that the company had not provided sufficient evidence to show use of the title DR. NO in the two markets of the European Union (specifically, Sweden and Germany) which provide some protection for film titles (beyond copyright protection) against registration of a trademark which gives rise to a likelihood of confusion with such titles.

With Danjaq not able to satisfy one of the criteria under Article 8(4) of Regulation No 40/94, it could not rely upon the provision to sustain an opposition against Mission Productions’ application.

Sidenote: Do you think Danjaq is aware of this pending USPTO application for the mark DR. NO filed by Medical Research Institute for “Nutritional and Dietary Supplements”?