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).
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."