Monday, January 18, 2010

Busy Busy Busy....

What’s a blogger to do when too busy to post something original – cite to other interesting blog posts, of course.

Seattle Trademark Lawyer Michael Atkins, posting a follow-up related to a declaratory judgment action for noninfringement of alleged trade dress filed by language software company Topics Entertainment Inc. against Rosetta Stone Ltd., provides a lesson about the “first to file” rule of which every lawyer should take note.

Courthousenews posts on the lawsuit filed by Mine O’Mine, Inc. (the corporation which owns the rights of publicity and intellectual property of Shaquille O’Neal) in Nevada District Court over a clothing company’s use of SHAQTUS (a moniker ascribed to O’Neil after he was traded to the Phoenix Suns and was called “The Big Shaqtus” – a play on the name Shaq and the many cacti prevalent in Arizona). See Mine O'Mine, Inc. v. Michael Calmese, True Fan Logo, Inc. and Dan Mortense, Case No. 10-cv-00043 (D. Nev. January 12, 2010) (complaint here). The Las Vegas Sun also ran a story on the lawsuit (link here).

Onpointnews discusses “The South Butt” case and the “cheeky” answer filed by Jimmy Winkleman’s attorneys in response to the trademark infringement lawsuit filed by the owners of The North Face clothing line that seeks to test the bounds of parody protection (and probably making more light of a matter that Mr. Winkleman should probably be taking much more seriously).

Pittsbrgh Trademark Lawyer Dan Corbett posts on the latest lawsuit filed by my favorite litigious cookie company, Eat ‘N Park Hospitality Group, Inc. (prior posts here and here) who maintains that its Section 2(f) trademark registration gives it a monopoly on a smiley face design on a cookie.

While Eat N’ Park has mostly gone after smaller online cookie sellers (and no doubt, convinced many of them to enter into a license agreement rather than continue with a costly litigation fight), it looks like Eat N’ park is finally going after a competitor, Crumbs Corporation, that actually has some money to fight. As discussed in my prior post here (discussing the setback faced by Franklin Loufrani’s SmileyWorld at the TTAB),

[G]iven that it took a “truly impressive” amount of money for Wal-Mart to stake a claim on a “ubiquitous, non-inherently distinctive design” that has become a “common feature of modern American culture,” one wonders if Eat ‘N Park can continue to claim exclusive rights to its “smiley” cookies when most (if not all) of Eat ‘N Park’s defendants are merely decorating a cookie with that captures this famed ornamental symbol.Does anybody out there really think that Eat ‘N Park has the same “impressive” advertising dollars to back up its claim of acquired distinctiveness? As the TTAB stated “Considering that we have already determined that the smiling face is a common feature of modern American culture, [acquired distinctiveness] will not be something easily achieved."

Finally, Ron Coleman’s Likelihood of Confusion® dispenses some detailed advice to an unnamed attorney with a client looking to establish a brand around the title or other reference that suggests a particular famous movie or scene therefrom. The cartoonish figure pictured above dispenses some of the most detailed and insightful free legal advice I’ve read online in a long time.

1 comment:

Ron Coleman said...

Thank you!

Cartoonishly yours...