Hard Rock Café Sues Hard Rock Hotel & Casino

On September 21, 2010, Hard Rock Cafe International (USA), Inc. (“HRCI”) filed a lawsuit in the U.S. District Court for the Southern District of New York against various defendants that use the “Hard Rock” trademark, most notably the group of companies which own and/or operate the Hard Rock Hotel & Casino in Las Vegas, Nevada (the “Defendants”). See Hard Rock Cafe International (USA), Inc. v. Hard Rock Hotel Holdings, LLC et al, Case No. 10-cv-07244 (S.D.N.Y. Filed September 21, 2010). A copy of the complaint can be downloaded here (HT: Steve Green). The Las Vegas Sun has an article on the lawsuit here (see also Courthousenews.com and Las Vegas Review Journal).

HRCI filed the action “in order to protect the enormous goodwill in its world-renowned trademarks from being systematically diminished, devalued and damaged by the wrongful conduct of Defendants.” HRCI claims that the Defendants are using the “Hard Rock” trademarks in a manner that has intentionally, materially breached the terms of a 1996 license agreement entered into with HRCI’s predecessor-in-interest and violates HRCI’s trademark rights to such marks.

More specifically, HRCI claims that the Defendants’ actions at the Hard Rock Hotel/Casino have caused HRCI’s marks to “become associated with objectionable and offensive conduct that is at odds with the brand imagery of the HARD ROCK trademarks” and “failed to use their best efforts to protect the goodwill associated with” HRCI’s trademarks.

The complaint spends several pages going through the history of the Hard Rock Café and the creation of the worldwide successful HARD ROCK brand by original founders Peter Morton and Isaac Tigrett.

Then, in 1990, The Rank Group, Plc (“Rank”), HRCI’s predecessor-in-interest, acquired all of Tigrett’s interests in the business then operated under the HARD ROCK Marks at that time. In June 1996, Rank entered into a transaction with Morton whereby Morton sold to Rank his interests in the business then conducted under the HARD ROCK Marks, with the exception of ownership of the Hard Rock Hotel & Casino in Las Vegas and the option to develop other properties using the HARD ROCK HOTEL and HARD ROCK CASINO marks in certain geographic areas.

According to the complaint, Rank acquired all right, title and interest to all HARD ROCK marks registered and used around the world and Morton received a license from Rank (through a Rank IP licensing special purpose entity, Rank Licensing, Inc.) to use the HARD ROCK HOTEL and HARD ROCK CASINO marks on a limited basis and subject to a number of conditions. Rank Licensing later assigned all right, title and interest in the HARD ROCK Marks to HRCI. (Note: The few assignment records reviewed regarding the some HARD ROCK registrations did not show this precise chain of title – see, e.g., here and here).

The complaint next asserts that in February 2007, as part of a buyout of Peter Morton’s interests in the Hard Rock Hotel/Casino business, Morton assigned the rights granted to and obligations imposed on him by the 1996 License Agreement to one of the Defendants, HRHH IP, LLC. And since that time, HRHH IP, LLC and Hard Rock Hotel Holdings, LLC have been licensees of HRCI under the 1996 License Agreement (and apparently represented to third party sublicensees that they are licensees under such agreement).

After detailing various sections of the License Agreement regarding use of the marks and protecting the goodwill, the complaint then gets into the juicy details which give rise to the dispute.

(looks like harmless, innocent fun)

In November 2008, a reality television program titled “Rehab: Party at the Hard Rock Hotel” (“Rehab”) began airing throughout the United States. Rehab supposedly depicts events occurring during pool parties held on Sundays at the Hard Rock Hotel & Casino in Las Vegas. [I use the word “supposedly” because does anybody really believe that “reality” shows actually depict reality anymore – as opposed to carefully calculated and constructed entertainment programs designed to appear as if they depict reality?]

According to the complaint, the behavior depicted in Rehab is “entirely at odds with the brand image of the HARD ROCK Marks.” Specifically,

Rehab portrays the Las Vegas HARD ROCK HOTEL & CASINO, a property operated under trademarks owned and licensed by HRCI, as a destination that revels in drunken debauchery, acts of vandalism, sexual harassment, violence, criminality and a host of other behavior that most members of the general consuming public of the United States who regularly frequent or are potential patrons of HRCI’s HARD ROCK CAFE restaurants and other properties operated under the HARD ROCK Marks would find unseemly and objectionable.

[Comment: Isn’t the "Hard Rock" brand image one that is associated closely with rock and roll music, which itself is associated with the image of sex, drugs, and rock and roll – sounds like the behavior depicted complements the brand imagery of the HARD ROCK marks quite nicely].

The complaint also maintains that the Rehab show portrays the staff of the Las Vegas Hard Rock Hotel & Casino as “unprofessional, incompetent, and/or physically and emotionally abusive to hotel guests and other staff.” [ed. – have you seen how rowdy and obnoxious some guests get while living it up in “Vegas”?] Of course, HRCI claims that it “prides itself on offering guests at its HARD ROCK CAFE restaurants and other properties operated under the HARD ROCK Marks dining and entertainment experiences that are pleasurable, fun and consistent with the democratic free spirit of rock music.” [Comment: I think the people engaging in the debauchery at the Rehab pool party were certainly having an entertainment experience that was pleasurable, fun and consistent with the democratic free spirit of rock music – and those watching the show from their homes would surely switch places if they could.]

HRCI then references some highly publicized arrests that occurred in September 2009 at the Rehab pool party where eight patrons were arrested for engaging in acts of solicitation of prostitution and drug distribution (Las Vegas Sun article here) – alleging that Defendants “allowed” the Rehab pool parties to become associated with criminal activity.

The complaint then quotes various communications from members of the public expressly various negatives comments about the Hard Rock Hotel/Casino after viewing the Rehab television show, including communications by members of the public who believe HRCI is responsible for the conduct depicted in the show.

HRCI received assurances from Defendants that the “negative associations” created by the show would be addressed, HRCI alleges that the third season of Rehab “depict the same offensive and depraved conduct portrayed in the first two seasons.” [ed. – does this type of language make anybody else want to check out this show now?]

HRCI maintains that this is harming the reputation and goodwill of the HARD ROCK Marks in violation of the 1996 License Agreement (which requires Defendants to use best efforts to maintain the goodwill of the HARD ROCK Marks). HRCI further maintains that by allowing the Rehab TV show to be aired – and causing the HARD ROCK Marks to become associated with “unsavory, offensive conduct that the majority of the American consuming public finds to be objectionable” [ed.—And yet, the ratings have been high enough to bring it back for a third season so people are watching!] – are intentionally damaging such goodwill.

HRCI also argues that Defendants breached a provision of the 1996 License Agreement by using the mark “HARD ROCK HOTEL” in the title of the Rehab show without HRCI authorization.

HRCI next argues that Defendants have begun branding certain facilities at the Las Vegas property using the acronym HRH (e.g., HRH Tower, HRH Beach Club, HRH Beach Club Bar & Grill) and even branding the property itself as the HRH HARD ROCK HOTEL & CASINO – with the HRH acronym being more prominent than the HARD ROCK HOTEL & CASINO trademark – in an attempt to create a sub-brand of the Hard Rock Marks over which Defendants can claim possesses independent goodwill and capable of being used independently of HRCI (HRCI does have one trademark registration for HRH for clothing items). HRCI maintains that such actions violate the 1996 License Agreement because Defendants are using a mark which is likely to cause confusion with and dilute the distinctive quality of the HARD ROCK Marks.

HRCI’s next focus is on Defendant’s sublicensing of the HARD ROCK HOTEL and HARD ROCK CASINO trademarks to the Cherokee Nation Enterprises, which operates a Hard Rock Hotel & Casino in Tulsa, Oklahoma, and to Pueblo of Isleta Indian tribe which operates a Hard Rock Hotel & Casino in Albuquerque, New Mexico.

Without getting much into specifics, HRCI alleges that the way the HARD ROCK Marks are being used at the Tulsa property are “inconsistent with the brand image HRCI has cultivated over many years” – citing on that “the range of services, character of the establishment and the experience offered to customers is incompatible with consumer expectations for goods and services branded with the HARD ROCK Marks.” [Comment: Are they not offering debaucherous pool parties?]. HRCI cites to some signage that is supposedly not the type of use allowed under the 1996 License Agreement and also mentions the use of the HARD ROCK HOTEL & CASINO mark in the restaurant name “Toby Keith’s I Love This Bar & Grill” where the HARD ROCK mark is subordinate (again, in violation of the provisions in 1996 License Agreement requiring the HARD ROCK Marks to be depicted more prominently, requiring HRCI consent, and requiring HRCI to have copies of all sublicense agreements made between Defendants and third party sublicensees).

HRCI maintains that Defendants have failed in their obligations to ensure that, for its sublicensees, the HARD ROCK Marks are used in a manner that is consistent with the reputation and goodwill of the HARD ROCK Marks. Similar allegations are made regarding Defendants sublicensing at the Albuquerque property.

HRCI’s final focus is the registration by the Defendants of numerous Internet domain names containing variations of the HARD ROCK Marks, including cherokeehardrockhotel.com, hrhpokeronline.com and hardrockroyalty.com, in violation of provisions of the 1996 License Agreement preventing the registration of domain names containing any HARD ROCK Marks.

HRCI’s causes of actions are for breach of contract, declaratory judgment regarding the enforceability of the 1996 License Agreement in light of Defendants’ intentional breaches, federal and state trademark dilution, registered and common law trademark infringement, and federal and common law unfair competition.

Dairy Queen Denied Preliminary Injunction Against Blizz Frozen Yogurt

In late July, there was a flurry (pun intended) of new reports (here and here) on the trademark dispute between American Dairy Queen Corp. (“DQ”), the company behind the ice cream chain Dairy Queen and its popular BLIZZARD ice cream treat, and a California yogurt company named Yogubliz Inc., which obtained a trademark registration for the mark BLIZZBERRY and sought to register the mark Blizz Frozen Yogurt. Morris Turek, a trademark attorney who blogs at www.yourtrademarkattorney.com/blog/, has a detailed post on the dispute here.

The lawsuit actually originated back on May 17, 2010, soon after Yogubliz received a cease and desist letter from DQ regarding Yogubliz’s use of BLIZZBERRY and BLIZZ FROZEN YOGURT. Yogubliz filed the action in the United States District Court for the Central District of California seeking a declaratory judgment that its BLIZZBERRY and BLIZZ FROZEN YOGURT marks did not infringe DQ’s BLIZZARD marks. See Yogubliz Inc. v. American Dairy Queen Corp., Case No. 10-cv-03677 (C.D. Cal.). DQ subsequently filed counterclaims for trademark infringement as well as cancellation of Yogubliz’s BLIZZBERRY trademark registration. Yogubliz’s complaint and DQ’s Answer and Counterclaims can be viewed here.

DQ also initiated two proceedings with the Trademark Trial and Appeal Board -- an opposition against Yogubliz’s pending trademark application for BLIZZ FROZEN YOGURT (see American Dairy Queen Corporation v. Yogubliz, Inc., Opposition No. 91195789) and a cancellation proceeding against Yogubliz’s trademark registration for BLIZZBERRY (see American Dairy Queen Corporation v. Yogubliz, Inc., Cancellation No. 92052818).

In the federal court litigation, DQ subsequently filed a motion for preliminary injunction. Reuters reported yesterday that the federal court denied DQ its motion for a preliminary injunction on the basis that DQ failed to show a likelihood of success on the merits of any of its claims. See Yogubliz Inc. v. American Dairy Queen Corp., Case No. 10-cv-03677 (C.D. Cal. September 3, 2010). A copy of the court’s order denying DQ’s Motion for Preliminary Injunction can be viewed here.

The primary Sleekcraft factors where DQ apparently lost its argument on likelihood of confusion were similarity of the marks, relatedness of the goods, and marketing channels.

With respect to “similarity of the mark,” the court stated as follows:

[T]he Blizz Frozen Yogurt and Blizzard marks are relatively dissimilar. When considered as they appear on their respective products, the marks share nothing in common besides the spelling of the initial syllable. The font, color, and surrounding graphics of the two marks is different. The word Blizzard in Dairy Queen’s mark presented in all caps, in blue, using a straight lined font. It is topped with a depiction of snow, and backed by a red band that reads “THE ORIGINAL ONLY AVAILABLE AT DQ.” In contrast, Yogubliz’s frozen yogurt cups read “Blizz Frozen Yogurt.” The word Blizz is emphasized, appearing in pink, capitalized but not in all caps, using a stylized wavy line font. A pink and purple spiral appears next to the word Blizz on the cup. Even emphasizing similarities over differences, little connects the two marks as they appear on their respective products.
. . . [DQ] correspondingly devotes the bulk of its argument to the similarities between the words Blizz and Blizzard. Blizz and Blizzard do sound alike in that blizz is the initial syllable of the word blizzard. However, it is not clear that the word blizz, encountered independently, brings to mind the word blizzard. There is no indication that blizz is an abbreviation of blizzard in common usage. Dairy Queen’s contention that blizz has no meaning other than as an abbreviation of blizzard is unavailing. It could just as easily be associated with the word bliss. Further, products often are marketed under names that are nonsense or invented words. Thus, like Pez, Pringles, or a host of other brand names, it is unclear that Blizz has any independent meaning aside from the product it is attached to. Therefore, this critical factor weighs against Dairy Queen’s case.

As for relatedness of the goods, the court found that soft serve ice cream and frozen yogurt, while similar in that they “serve the same overall purpose for a consumer (a sweet treat),” they are not complementary goods and not closely related especially “given the health and taste differences between the two.” While the court recognized that similar marks can still cause confusion even when products are not closely related, the court found this factor to tip in favor of Yogubliz, but not dispositive.

As for the marketing channels used, while the court acknowledged that both products reach consumers through retail outlets,

the products are not marketed at a common retail location. Blizzards are sold at Dairy Queen restaurants, while Blizz Frozen Yogurt is sold through Yogubliz’s frozen yogurt shops. There is little possibility that a consumer could mistakenly seek a Blizzard in walking into a Blizz Frozen Yogurt or Blizzberry store if the consumer was aware that the Blizzard is a Dairy Queen product. There is also a distinction between the two retail locations where the products are available. While Dairy Queen operates fast food restaurants where Blizzards are offered alongside hamburgers, french fries and other food, the Yogubliz stores sell only desserts.

In response to DQ argument’s that a consumer might still think that Dairy Queen owned or sponsored Yogubliz’s shops, the court stated the following:

It is unclear, however, what would cause a consumer to believe that the stores operated by Yogubliz were owned by or affiliated with the Dairy Queen stores. There is some similarity, however weak, between the marks of Dairy Queen and Yogubliz’s respective products. But, there is no similarity alleged between the name or overall appearance of a Dairy Queen Restaurant and a Blizz Frozen Yogurt store. The argument for affiliation would thus turn on the idea that Blizzard is such an iconic brand that a store bearing some weak similarity to the name of that product would be assumed by customers to have some affiliation with the Dairy Queen company. This argument is strained, and cannot be accepted without supporting evidence. Overall, this factor weighs against Dairy Queen.

The court also rebuffed DQ’s trademark dilution claim on the grounds that the BLIZZ FROZEN YOGURT mark is not “nearly identical” to DQ’s BLIZZARD mark.

Having found no likelihood of success on the merits of any of DQ’s claims, the court denied DQ’s motion for preliminary injunction.

Of course, the court’s denial of a motion for preliminary injunction, while signaling to DQ that its case might be weak, does not bring this dispute to an end. It merely means that DQ failed to present sufficient evidence at this early stage that it would ultimately success on its claims such that it was entitled to a preliminary injunction at this early stage of the litigation.

Whether DQ will continue the fight after suffering this initial defeat is anybody’s guess. In the end, like most David and Goliath litigations, it may come down to how long can the relatively small Yogubliz do battle with the behemoth DQ (which is owned by Warren Buffett’s Berkshire Hathaway Inc.) – and how important this particular battle is to both sides.

And is anybody else out there surprised that Pinkberry, well known for its aggressive stance against any frozen yogurt store using any type of mark ending in “berry” (see prior blog post here) never went after Yogubliz's use of BLIZZBERRY?

Bellagio Hotel & Casino Sues Mattress Maker Over BELLAGIO mark

Bellagio Hotel & Casino in Las Vegas, Nevada

Bellagio, LLC, the Mirage Resorts Incorporated (“MRI”) subsidiary which owns the Bellagio Hotel & Casino in Las Vegas, has sued Italian mattress maker Magniflex USA, Ltd. (“Magniflex”) in the U.S. District Court for the District of Nevada over Magniflex’s use of the mark BELLAGIO in connection with bed mattresses. See Bellagio LLC et al v. Magniflex USA, Ltd., Case No. 10-cv-01311 (D. Nev. Filed August 4, 2010). A copy of the complaint can be downloaded here (HT: Steve Green). The Las Vegas Sun has coverage of the lawsuit filing and Magniflex’s reaction to the lawsuit.

In the complaint, Bellagio alleges that it has been selling BELLAGIO mattresses since at least as early as 2001 through a retail store located at the Bellagio or through its website. Click here to see the section of Bellagio’s website selling “Serta mattresses, exclusively created for Bellagio” [Query: So are these Serta-brand mattresses or Bellagio-brand mattresses? And does Bellagio exercise quality control over the mattresses that Serta creates for it?]

Bellagio’s website

Of course, if Bellagio had been selling such mattresses for all that time, then one wonders why MRI chose to file trademark registration applications on February 3, 2010, for the mark BELLAGIO (word mark and stylized) in connection with “mattresses” on the basis of intent-to-use (as opposed to use-in-commerce). Both applications were provisionally refused registration based on the pending application for the mark BELLAGIO for various furniture goods – which itself was provisionally refused registration based on an existing registration for the mark BELLAGIO LUXURY for future goods. However, the applicant of the BELLAGIO furniture mark recently expressly abandoned its application (after abandoning its effort to cancel the BELLAGIO LUXURY MARK ), so there is nothing likely standing in the way of MRI’s applications moving forward towards publication.

Bellagio’s exclusively designed Serta® mattress

Bellagio first became aware of Magniflex’s mattresses at the Spring 2010 High Point Furniture Market in High Point, N.C. Magniflex showcased its Bellagio mattresses again at the bi-annual Las Vegas Market furniture industry event at the World Market Center in Las Vegas. Bellagio alleges in its complaint that Magniflex is selling a line of mattresses using the BELLAGIO mark that is likely to cause confusion with Bellagio’s use of the BELLAGIO mark in connection with its specially made Serta® mattresses. Bellagio also claims that Magniflex’s use of the BELLAGIO mark is likely to cause dilution of Bellagio’s famous BELLAGIO mark under federal trademark dilution law.

Magniflex’s Bellagio Lavender mattress

In a statement issued after hearing of the lawsuit, Magniflex’s President Marco Magni stated that its “Bellagio Lavender” line of mattresses were named after the town Bellagio in the Como province in Northern Italy located on Lake Como (which just so happens to have also served as the inspiration for Steve Wynn when he originally built the Bellagio Hotel & Casino). Magni stated that the Bellagio name is meant to pay homage to the Italian city and to be synonymous with fine Italian craftsmanship (Magniflex also maintains that it is one of Italy’s largest mattress manufacturers and sells its products throughout the world).

The town of Bellagio on Lake Como

(Photo Credit: Marcus90)

Bellagio’s causes of action are for federal trademark infringement, federal trademark dilution, federal unfair competition, and common law unfair competition. Bellagio seeks injunctive relief as well as damages, costs, and attorneys fees.

Two Trademark Parody Cases For Your Amusement

In the first case, the companies behind the JOHNNIE WALKER brand of scotch whisky are suing the purveyors of JOHNNIE BARKER BLACK LAB flavored dog water (pictured above on the right) for infringement and dilution of the JOHNNIE WALKER BLACK LABEL trade dress (pictured above on the left) (see registrations here, here, and here). See Diageo Brands B.V. et al v. Vineyards et al., Case No. 09-cv-02002 (D. Conn. Dec. 9, 2009) (complaint here).

Anybody else out there really believe that Johnnie Walker is expanding its famous whisky brand into the highly lucrative canine beverage market? [For those who can’t get enough of these whacky trademark disputes involving parody pet items, check out prior blog posts here, here, and here].

The second trademark parody case involves a lawsuit by the company which owns the clothing brand THE NORTH FACE against a Missouri man named Jimmy Winkelmann and his related company over use of THE SOUTH BUTT in connection with certain clothing items. See North Face Apparel Corp., The v. Williams Pharmacy, Inc., et al., Case No. 09-cv-02029 (E.D. Mo. Dec. 10, 2009) (complaint here).

"The North Face" Jacket

"The South Butt" Jacket

The North Face opposed The South Butt’s attempt to register its mark. See The North Face Apparel Corp. v. The South Butt, LLC, Opposition No. 91191521 (T.T.A.B.). In response to cease and desist correspondence from The North Face, counsel for The South Butt stated that The South Butt was interested in having The North Face acquire The South Butt and its inventory for $1,000,000. {ed.--Hmm, has kind of a cybersquatting feel to it, doesn’t it}. The South Butt has since filed another trademark application and continues to sell its clothes through its website.

In this case, the attempt to take advantage of the trademarks and goodwill developed by The North Face seems clear enough that The South Butt is not likely to be able to get around a likelihood of confusion finding. And yet, to the extent that The South Butt attempts to defend its mark as a parody, this use of The South Butt on clothes does not strike me as such a clear cut example of a trademark parody which in turn ultimately undercuts the company’s parody argument (i.e., the parody in this instance is not as obvious as say the use of a famous scotch whisky brand label in connection with the sale of flavored dog water).

[Update: Daniel Corbett, who posts on the Pittsburgh Trademark Lawyer blog (a blog name that I can certainly relate to), has his own take on the The South Butt lawsuit here.]

Two Las Vegas Adult Film Companies Battle Over “Deep Throat”

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HeinieSniff'n Dog Toy Maker Seeks Declaratory Relief

I previously blogged (link here) about the court decision ruling against VIP Products, LLC (“VIP”) over one of its “beer” bottle shaped squeaky dog toys. In that case, it was Anheuser-Busch, Inc. (“AB”) which sued VIP over its “Buttwiper” dog toy (pictured above) and the court granted AB’s motion for preliminary injunction based on likelihood of success on the merits of AB’s trademark infringement claims. 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).

Yesterday, VIP, possibly hoping for a better outcome in its home jurisdiction, opted to go on the offensive with respect to another one of its “beer” bottle shaped squeaky dog toys – in this case, the HeinieSniff'n (reminiscent of the famed Heineken bottle).

On April 21, 2009, VIP filed a declaratory judgment action against Heineken USA Incorporated and Heineken Brouwerijen B.V. (together “Heineken”). See VIP Products, LLC v. Heineken USA Incorporated et al, Case No. 09-cv-00842 (D. Ariz.) A copy of the complaint can be downloaded here.

According to the complaint, on April 17, 2009, attorneys for Heineken contacted one of VIP's customers (Scalawags of Kennebunkport, Maine) selling the HeinieSniff'n dog toy claiming that the dog toy infringed and diluted Heineken’s trademarks and trade dress and demanding that Scalawags cease and desist from selling the toy and remove all pictures of the toy from the company’s website.

VIP seeks a declaration that VIP’s HeinieSniff’n dog toy does not infringe or dilute any trademark or trade dress rights owned by Heineken.

Adventist Church Wants U.S. Government Agencies to “Quit Now!”

On February 3, 2009, The General Conference of Seventh-day Adventists (“GCSA”), the governing organization of the Seventh-day Adventist Church, filed a trademark infringement lawsuit against the U.S. Department of Health and Human Services (“HHS”) and the National Institutes of Health (“NIH”) in the U.S. District Court for the District of Columbia. A copy of the complaint can be downloaded here.

At issue is the phone number 1-800-QUIT-NOW established by HHS/NIH in connection with services to help people stop smoking. In addition to setting up the number, HHS/NIH began using the number as a service mark in connection with such smoking cessation services sometime around January 2007 (currently promoted on the website http://1800quitnow.cancer.gov/).

HHS also filed a trademark registration application for the above design mark, but was ultimately refused registration by the UPSTO as likely to cause confusion with two federal trademark registrations owned by GCSA for the mark QUIT NOW! (for both the word mark and design mark) for two classes of services (“conducting smoking cessation seminars and distributing educational brochures and materials dealing with smoking cessation in connection with the seminars” and “health care services, namely counseling to assist individuals to stop smoking”). HHS failed to file a response to the PTO’s second office action, which was due December 8, 2008, and a Notice of Abandonment was issue on February 2, 2009.

According to the complaint, in early 2008 (after the PTO’s initial office action, but before the PTO's second office action), NIH contacted GCSA about acquiring its QUIT NOW! marks. While GCSA was not interested in selling, it did express an interest in licensing the marks. A draft agreement was forwarded to NIH in March 2008, but NIH (like most government agencies) was not very quick to respond. There were several attempts by GCSA to follow-up on NIH’s interest in licensing the marks, but NIH never responded. Instead, in December 2008, HHS/NIH apparently began a larger marketing campaign for its 1-800-QUIT-NOW number and website.

GCSA’s causes of action are federal trademark infringement under 15 U.S.C. §1114; federal unfair competition under 15 U.S.C. §1125(a); and federal trademark dilution under 15 U.S.C. §1125(c).

[Comment: Am I the only one out there who finds it annoying when trademark litigants throw in a trademark dilution claim for a mark with very questionable “fame.” Either some parties are delusional about their “fame” or they don’t appreciate the fact that fame requires a mark to be recognized by the general consuming public of the United States. Do these people really believe that their mark is “famous”? GCSA filed for the QUIT NOW! marks in late 2001/early 2002. Both were allowed in November 2002. GCSA filed five extensions of time to file a Statement of Use. Finally, just shy of the three year deadline, GCSA filed Statements of Use in November 2005 – claiming first use in July 2005. The marks were registered February 2006. GCSA may have a decent case against the government for trademark infringement, but dilution after a little over 3 years of use? -- I have two words for that cause of action: quit now!]

One Former Las Vegas Businessman is a Trademark “Virgin” No More

A former Las Vegas businessman got a lesson in trademark law and found out the hard way how seriously some large companies take their trademarks.

This last Saturday, the Las Vegas Review Journal had an article (link here) about a lawsuit filed by Virgin Enterprises, Ltd. (“Virgin”), the owner of numerous trademark registrations for the mark VIRGIN, against Paul Johnson, the owner of Virgin Properties – a company specializing in acquiring and development of previously untouched property (i.e., “virgin” property). [Note: I was unable to find the lawsuit listed on Justia.com].

Benjamin Spillman, the reporter who wrote the story, interviewed me about the lawsuit and included a few of my quotes.

As most lawyers in the trademark world already know, Virgin is well known for trying to stop any other businesses from using the word “Virgin” in connection with any other goods and services (regardless of whether Virgin actually holds any trademark rights to the mark VIRGIN in connection with an alleged infringers goods and services – and thus apparently having to rely on a dilution type of argument occasionally where the traditional likelihood of confusion might fail). Click here for a listing of other trademark applicants who were challenged by Virgin in their attempt to register some mark with the word VIRGIN in it.

And thus, the reason why this man using the term VIRGIN in connection with the descriptive term PROPERTIES incurred the wrath of Virgin.

Of course, one wonders if Johnson had instead chosen to use “virgin properties” in a more obviously descriptive sense (e.g., “Paul Johnson – Selling Virgin Properties Exclusively Since 2000”), would Virgin still have gone after him?

American Idol goes after Texas Strip Club Over “Stripper Idol”

I feel like I should have a write-up about the trademark infringement lawsuit filed by the company behind “American Idol” against Palazio Men's Club, an Austin, Texas strip club that hosts a weekly amateur stripping contest that the club promotes as “Stripper Idol.” After all, The Dallas Morning News had an article on the lawsuit yesterday, and since that time, multiple news reports have picked up on the story (e.g., NY Daily News, Portfolio.com, and E!Online).

I guess the reason I passed on the story when I read about it yesterday was because the lawsuit was actually filed over a month ago – which makes it “old news” in the blogging world. Besides, one particular blog – Fouman.com – already did a pretty good write-up back when the complaint was still fresh and new.

FremantleMedia North America, Inc. is the owner of the “American Idol” brand and frequent trademark opponent against a host of trademark applicants who filed marks containing the word IDOL in them following the success of the TV show in 2002 (see list of TTAB oppositions here). So it should come as no surprise that FremantleMedia decided to take legal action against Benelux Corporation and its owner, Athanases Stamatopoulos, over its weekly “Stripper Idol” contests. See Fremantlemedia North America, Inc. v. Benelux Corporation et al, Case No. 08-cv-00908 (W.D. Tex. Filed December 16, 2008). A copy of the complaint can be downloaded here.

But one wonders why all of the publicity now over a lawsuit that became public well over a month ago? It wouldn’t have anything to do with the fact that American Idol premiered its latest season yesterday – and word of this “interesting” lawsuit is getting the program some much needed publicity with ratings on the decline for the perennial "karaoke" show?

So is American Idol worried having consumers falsely believe that there is an association between its American Idol and this Texas strip club contest or that their use of the Idol name will dilute their “Idol” brand. Or perhaps FremantleMedia is considering broadening the Idol brand to include stripping contests? After all, they came close last night – those who saw the show last night – in particular, Katrina Darrell (the “bikini girl”) – know what I’m talking about. And for the rest of you, click here for video.

Trader Joe’s Sues New York Grocery Chain Over Trader John’s

Earlier this week (link here), I wrote about the Larry Flynt’s nephews being sued because they distributed an adult movie under the company name Flynt Media Corporation. Their logic was that they have every right to use the name “Flynt” as a business name because its their name.

Yesterday, the news was about John Catsimatidis, the CEO of Gristede’s Foods Inc., the owner of the Gristede’s supermarket chain in New York City. The popularity of Gristede’s in New York has apparently been languishing with the number of stores declining from 78 stores in 2000 to 35 stores in 2008.

Catsimatidis, a billionaire and potential mayoral candidate for New York City, decided to change the look of one particular store on 14th Street in Manhattan as an “experiment.” His idea for the name of this rebranded store came from the fact that his name is John and he is a trader, ergo call it “Trader John’s.” No one should have a problem with that, right?

Trader John's on 14th Street

(Photo Credit: The Shophound)

Well, no one except the Trader Joe’s Company Corporation – the California company that owns the chain of 326 Trader Joe’s grocery stores throughout the United with estimated current annual revenue of around $7.2 billion – including a store on 14th Street in Manhattan which is apparently so popular that shoppers often have to stand in line just to get inside and shop, and which also, coincidentally, is just three blocks away from the “Trader John’s” location. Trader Joe’s holds numerous registrations for the mark TRADER JOE’S including one for “specialty grocery store services.”

Trader Joe's on 14th Street

And did I mention that Catsimatidis also came up with the “unique” idea of decorating his store with “wood paneling, wagon wheels, and baskets.” No one has a grocery store that looks quite like that, right?

Not surprisingly, Trader Joe’s filed suit to stop Gristede’s from opening the “Trader John’s” store – set to open sometime next week – after previous cease and desist letters were apparently ignored. Bloomberg, Forbes, and the NY Post all had news reports on the lawsuit.

While I have not seen the complaint, Trader Joe’s is apparently claiming both trademark infringement, trade dress infringement, as well as trademark dilution (dilution by blurring and dilution by tarnishment) of its famous grocery name (among other likely state and common laws trademark related causes of action). The tarnishment argument is apparently supported in part by numerous online postings commenting on the shoddy conditions found by such consumers at Gristede’s stores. The trade dress argument attacks Catsimatidis creation of a store which mimics the look and feel of a Trader Joe’s store, which Trader Joe’s will undoubtedly maintain has acquired a secondary meaning as identifying their grocery stores. [While I’m not so sure I agree that the type of interior used by Trader Joe’s has acquired a particular distinctiveness as identifying Trader Joe’s exclusively, when the trade dress is combined with a similar sounding mark, it is certainly supportive of a likelihood of confusion as well as strong evidence of an attempt by Catsimatidis to infringe upon the Trader Joe’s – not only naming your store with a similar mark, but then giving it a similar look].

One wonders how a man who was able to become a billionaire can honestly say with a straight face that he has the right to rename his stores “Trader John’s” just because his name is John and he is a trader. And is there anybody out there that doesn’t think that he chose this particular name in order to take advantage of the goodwill built up in the “Trader Joe’s” name?

What’s next – his use of the name “Trader John’s” does not infringe the “Trader Joe’s” registered trademark for “specialty grocery stores” because he plans for his grocery stores to be very average, ordinary grocery stores that will be not be selling any “specialty” goods?

Larry Flynt Sues Nephews for Trademark Infringement and Dilution

Flynt Publications Building in Beverly Hills, California

The LA Times and AP reported on the trademark infringement lawsuit filed by Hustler Magazine publisher Larry Flynt on Monday against his nephews, Jimmy Flynt II and Dustin Flynt, over their decision to start their own adult film distribution company named Flynt Media Corporation. The Flynt brothers had worked for their uncle for over a decade, but Larry Flynt reportedly fired them for being “unproductive,” but giving them each a $100,000 severance package which they then used to start up their new company.

Given the widespread notoriety of both Larry Flynt and Larry Flynt Publications in connection with the porn industry, it’s very likely that consumers would wrongly affiliate a porn company named Flynt Media Corporation with Larry Flynt and/or Larry Flynt Publications, which, to the extent that Flynt cannot control the “quality” of the company’s offerings, could cause irreparable harm to Flynt’s goodwill (if that’s what you want to call it).

Some may argue that the Flynt brothers have the right to use their own name and that this is a case of a big bully picking on the little guys. While I’m the first person to stand up for the little guys in the face of a big bully corporation's flexing their trademark muscles, people forget that trademark law is designed to protect consumers in the marketplace. The brothers do not have the right to use a business name that is likely to cause confusion in the marketplace -- even if they do have some bona fide basis for the name.

Besides, did they really need to operate under the name Flynt Media Corporation? Why couldn’t they have chosen JDF Media Corporation or even something like Flynt Brothers Media Corporation? The additional word “Brothers” after Flynt goes a long way towards preventing consumer confusion -- and at the same time allows the brothers to use their name for the business. Or did they choose to just go with their particular business name because they knew that having just the “Flynt” name by itself might make some people believe that it is associated with Larry Flynt which would probably help open some doors for a company seeking to make it big in the already very-crowded field of adult entertainment? That’s called “trading on goodwill” – and that’s unfair competition.

[Update: The Los Angeles Intellectual Property Trademark Attorney Blog has copies of both the First Amended Complaint as well as the Temporary Restraining Order granted by the Court.]

Harrah’s Sues Indiana Strip Club Over “Horseshoe” Trademark

On December 30, 2008, Harrah's License Company, LLC – the IP holding company for Harrah's Operating Company, Inc., the owner and operator of over 38 casinos worldwide – filed a lawsuit against Indiana resident John Mattingly in the U.S. District Court for the Southern District of Indiana. See Harrah's License Company, LLC v. Mattingly, Case No. 08-cv-00219 (S.D. Ind.). A copy of the complaint can be downloaded here.

Back in 2004, Harrah’s acquired all of the intellectual property then owned by Binion’s Horseshoe – most famously known for “The World Series of Poker” – after Binion’s Horseshoe was forced to shut down following the seizure of all of the casino’s money by federal agents in order to satisfy a judgment owed to several unions.

As part of the purchase, Harrah’s acquired the “Horseshoe” name, including several trademark registrations for casino services and hotel, restaurant and bar services. As part of its use of the “Horseshoe” name, Harrah’s has used the following logo:

Harrah’s operates five casinos under the HORSESHOE name including two in Indiana (one in Elizabeth, Indiana and the other in Hammond, Indiana).

According to the complaint, Mattingly owned a night club named “The Rustic Frog” in New Albany, Indiana for many years. Sometime in November 2008, Mattingly converted the club into a strip club and began operating the club under the name II HORSESHOES GENTLEMEN’S CLUB. (Click here for a background article on controversy surrounding the club’s opening). In addition to the HORSESHOES name, the club purportedly uses a similar type of horseshoe logo as that used by Harrah’s (the low quality pictures can be viewed in the complaint – I was unable to find any online pictures of the logo Mattingly supposedly uses). Mattingly’s club is only 8 miles away from Harrah’s Elizabeth, Indiana location and supposedly on the major highway that leads from New Albany to the casino.

Harrah’s causes of action are for federal trademark infringement under 15 U.S.C. §1114, federal unfair competition under 15 U.S.C. §1125(a), federal trademark dilution under 15 U.S.C. §1125(c), common law trademark infringement and unfair competition, and trademark dilution under Indiana law (Ind. Code §24-2-1-13.5).

The Famous Million Dollar Display at Binion's Horseshoe

(previously purchased by a collector in 2000 but brought back in 2008)

VISA wins again against eVISA on trademark dilution claim under TDRA standard

The third time will hopefully be a charm for Visa International Service Association (“Visa”), owner of the famed VISA mark, in its long running trademark dispute with JSL Corporation (“JSL”) over JSL's use of the mark eVISA.

On December 16, 2008, the U.S. District Court for the District of Nevada decided once again on summary judgment that JSL’s use of the eVISA mark was likely to cause dilution against the famed VISA mark. See Visa International Service Association v. JSL Corporation, Case No. 01-CV-00294, 2008 U.S. Dist. LEXIS 101399 (D. Nev. December 16, 2008).

The case has actually been decided in Visa's favor twice already -- both times on summary judgment. On October 22, 2002, the district court granted partial summary judgment in favor of Visa on its trademark dilution claim, finding that Visa had shown as a matter of law that JSL use of the EVISA mark likely diluted the VISA mark. On appeal by JSL, the Ninth Circuit on January 16, 2004 remanded the case back to the district court in order for the court to consider the impact of the U.S. Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003), which held that to prevail on a dilution claim under the dilution law at the time (the Federal Trademark Dilution Act ("FTDA")), a plaintiff must establish actual dilution rather than a likelihood of dilution.

After the Ninth Circuit's remand, the Trademark Dilution Revision Act of 2006 ("TDRA") was subsequent signed into law on October 6, 2006. On remand, the district court applied the FTDA and again granted summary judgment to Visa on its trademark dilution claim on December 27, 2007. The court, following the Ninth Circuit’s instructions set forth in Jada Toys, Inc. v. Mattel, Inc., 496 F.3d 974 (9th Cir. 2007), applied the old dilution law rather than the new law because Visa had filed the lawsuit in 2001 before the FTDA was enacted. On February 1, 2008, Visa filed a motion for relief from a final judgment based on this court's "mistake" in applying the FTDA rather than the TDRA.

Before the district court could decide the motion, the Ninth Circuit, on February 21, 2008, amended the Jada Toys decision (previously blogged here) to apply the TDRA to a trademark dilution claim even though the plaintiff filed suit before the TDRA's enactment. See Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008). The district court then informed the Ninth Circuit that it wished to entertain Visa’s motion for relief from a final judgment in light of the Ninth Circuit's amended Jada Toys decision and the Ninth Circuit remanded the case to allow this court to consider Plaintiff's motion for relief from a final judgment.

In the end, the court granted Visa’s motion for relief from a final judgment although it did so under Fed. R. Civ. P. 60(b)(5) (a party can challenge a final judgment if “it is based on an earlier judgment that has been reversed or vacated” or “applying it prospectively is no longer equitable”) instead of under Rule 60(b)(6) (for any other reason justifying relief from the operation of the judgment) which was the basis cited by Visa in its motion.

Visa tried to get the court to apply the law of the case doctrine and simply accept the court’s earlier decision to grant summary judgment after finding "likely dilution" under the pre-Moseley standard; however, the court recognized that the law of the case doctrine has an exception where there is “an intervening change in the law” and proceeded to analyze the facts again under each part of the TDRA to determine if there was any element which may be appropriate for applying the law of the case doctrine

The court did not apply law of case to the fact of fame, but found once again under the TDRA that the VISA mark is famous. As for the TDRA’s requirement that a mark be distinctive, the court accepted its prior order finding the VISA mark to be arbitrary when used in connection with the goods and services provided by Visa. Regarding JSL’s use of the VISA mark in commerce, the court concluded that it had used a mark that was nearly identical to the protected mark – the same mark except for the JSL's addition of a letter 'e' as a prefix, which is commonly used to denote the online version of a business.

The court applied law of the case to the factor of JSL’s use after the mark became famous because the element is identical to the FTDA. Finally, the court applied the six nonexclusive factors set forth in 15 U.S.C. § 1125(c)(2)(B) that a court may consider in determining whether a trademark is likely to cause dilution by blurring and found that Visa had made an “exceptionally strong showing” on four of the six factors. The court concluded as a matter of law that JSL’s use of the EVISA mark is likely to cause dilution by blurring of Plaintiff's VISA mark, and amended its December 27, 2007 order accordingly.

Finally, the court, applying law of the case, granted the same injunctive relief that it previously ordered – namely enjoining JSL from using or registering the EVISA mark and from using the www.evisa.com domain name.

Gallup Survives Motion to Dismiss in Trademark Infringement Lawsuit Against Gallup Pakistan

Gallup, Inc. (“Gallup”), the organization famous for its surveys and public opinion polls, filed a trademark infringement and trademark dilution lawsuit in March against Business Research Bureau and Ijaz Shafi Gilani (the “Defendants”) over the use of the mark GALLUP.

Gallup owns numerous United States trademark registrations and applications containing the GALLUP mark including, among other goods and services, public opinion polls and business management consulting services.

Defendants, operating under the name Gallup Pakistan, provide survey and opinion polls on political, social, and business topics to international agencies and educational institutions, including some in the United States. Between January 11 and February 22, 2008, Defendants released six polls regarding Pakistani public opinion of issues surrounding the Pakistani parliamentary elections. The polls were promoted on Defendants’ website, which is in English and accessible to the United States. Defendant Gilani, the chairman of Gallup Pakistan, also made an appearance at a conference in Chicago in 2007 where he presented a paper that bore the Gallup Pakistan name. He also spoke on National Public Radio on February 12, 2008, to discuss his organization’s poll results and was introduced as the head of “the Pakistani chapter of the Gallup polling organization.” Gilani also made an appearance on an internet broadcast around the same time. Gilani was not in the United States during either of those broadcasts.

In response to Gallup’s lawsuit for trademark infringement and dilution, the Defendants moved to dismiss the complaint on the ground that the court did not have subject-matter jurisdiction (Defendants did not challenge the exercise of personal jurisdiction – possibly because Gilani appeared pro se). Specifically, Defendants argued that there was no basis to exercise extraterritorial jurisdiction under the Lanham Act. Gallup countered by arguing that the exercise of extraterritorial jurisdiction was not necessary because Defendants’ committed infringing acts in the United States sufficient to establish subject-matter jurisdiction.

U.S. District Court Judge William Alsup found that Gallup’s complaint had sufficiently alleged that Defendants’ infringing activities occurred in the United States to meet its burden of establish subject-matter jurisdiction under the Lanham Act. See Gallup, Inc. v. Business Research Bureau et al, Case No. 08-cv-01577, 2008 U.S. Dist. LEXIS 93462 (N.D. Cal. November 10, 2008).

Under the Lanham Act, courts have jurisdiction which extends to “all commerce which may lawfully be regulated by Congress.” (see 15 U.S.C. 1127). The court noted that the phrase “in commerce” does not necessarily require that the infringing acts take place “‘in commerce’ which is subject to congressional regulation, but that the acts have an adverse effect on that commerce.” Wells Fargo & Co. v. Wells Fargo Exp. Co., 556 F.2d 406, 427 (9th Cir. 1977).

Gallup alleged that Defendants’ trademark infringement occurred “in commerce” in three ways. The first way was Defendants’ publishing of poll results in the United States using the Gallup name. Gallup alleged that Defendants’ trademark infringement not only occurred in commerce, but also has the potential to adversely affect that commerce. The infringement was “in commerce” because Congress regulates the use of trademarks on published materials and the infringement adversely affects that commerce by impairing Gallup’s right to capitalize on its registered mark in its publications. Further, it did not matter that the Defendants do not advertise, market, or promote any goods or services in the United States: “The test is whether the alleged infringement occurred within an area of commerce that Congress regulates or whether the infringement adversely affected that commerce. Even if defendants did not ‘advertise, market, or promote’ their services in the United States, plaintiff sufficiently alleges that defendants’ use of the Gallup mark occurred within commerce and adversely affected that commerce.”

The second way was Defendant Gilani’s appearance in the U.S. promoting his poll results under the Gallup mark. The court found that Gallup had sufficiently alleged that Defendants’ presentations at conferences in the United States using the Gallup mark as well as Gilani’s interview on NPR and participation in the internet broadcast adversely affected commerce regulated by Congress. Specifically, Gallup’s allegations that a) Defendants’ use of the Gallup mark in connection with opinion polls, surveys, and management consulting occurs in the same markets and channels of trade as those offered by Gallup under the Gallup mark and b) Defendants’ use of the Gallup mark has caused or is likely to cause confusion, to cause mistake, or to deceive customers of both Gallup and the defendants and to cause the dilution of the distinctive quality of the Gallup mark.

The third way in which Gallup argued that Defendants’ trademark infringement occurred “in commerce” was Defendants’ operating of a website prominently featuring the Gallup mark. The court found that Gallup had sufficiently alleged that Defendants’ trademark infringement occurred “in commerce” by alleging that the web site was accessible in the United States and that use of the Gallup mark had an adverse effect on commerce.

Because the court found that Gallup’s complaint sufficiently alleged actions “in commerce” and action having an adverse effect on commerce in order to give the court subject-matter jurisdiction over Gallup’s claims against the Defendants, the court did not consider Defendants’ argument that there was no basis for extraterritorial jurisdiction. The court noted that the question of whether a court can exercise extraterritorial jurisdiction under the Lanham Act is only reviewed if the plaintiff seeks to reach foreign activities of the defendant, and, in this case, Gallup clarified in its opposition brief that it was not seeking to enjoin Defendants’ activities in Pakistan or to determine rights to the Gallup mark in Pakistan.

Article Highlights Intel’s Aggressive Trademark Enforcement

Back in July, I highlighted (link here) an opposition filed Intel against a company that was seeking to register the mark INTELLEQUITY (an opposition which is still pending with the parties continuing to extend the time for the applicant to answer while the parties engage in settlement discussions). See Intel Corporation v. Business Development Partners, LLC, Opposition No. 91185394 (T.T.A.B. Filed July 23, 2008).

An article by Zusha Elinson published on Law.com earlier this week (link here) highlights some of Intel’s other aggressive trademark infringement lawsuits.

According to the article, Intel has filed 15 trademark infringement and/or trademark dilution actions this year against companies with the word “intel” in their name. You can see the list for yourself on Justia (although I only count 14 actions, one of which is likely a declaratory judgment filed in Florida three days before Intel brought suit in California).

The article spotlights one particular suit against Barry Hood who received a 108-page trademark-infringement lawsuit from Intel for using the name Intellelectric for his sole proprietorship. The article also notes Hood’s unsuccessful attempt to get help from Pre-Paid Legal Services because the “trademark dispute was a pre-existing condition and not covered by his plan.” Interestingly, however, Hood’s accountant apparently negotiated a payment from Intel of $3,500 to allow Hood to change his name (Intel having apparently originally offered him $1,500 to change the name).

Intel also sued a travel agency (Intellife Travel), an investment advisory business (Insider Intel), and an Ohio telecom company (Intelcom). The travel agency, acting pro se, fought back against Intel for about a month (their cause having caught the attention of TechCrunch blogger Erick Schonfeld in his post “Intel Is Worried You Might Think It Is A Chinese Travel Agency” which includes a copy of the complaint received and some of the back and forth correspondence). The agency apparently reached its own confidential settlement with Intel – but as of today, the agency’s website www.intellifetravel.com is still up and running.