NIKE goes after MIKE

Another one for the category “What was this applicant thinking?”

Nike, Inc. (“Nike”), owner of several registrations for the mark NIKE (for footwear and clothing), filed an opposition today against an individual named Scott Nelson who filed a Section 1(b) intent-to-use trademark application to register the mark MIKE (for various clothing). See Nike, Inc. v. Scott Nelson, Opposition No. 91183553 (T.T.A.B. April 15, 2008). A copy of the notice of opposition can be downloaded here.

The opposition not only invokes the obvious grounds for rejecting registration of the mark (likelihood of confusion, dilution), but also cites Section 2(a) of the Lanham Act (15 U.S.C. § 1052(a)) (which prohibits registration of a mark which falsely suggests a connection with a person, living or dead) and Section 2(c) of the Lanham Act (15 U.S.C. § 1052(c)) (which prohibits registration of a mark which comprises a name identifying a particular living individual except by his written consent).

Of course, the person at issue in this case would be legendary basketball player Michael Jordan. Nike’s notice of opposition notes the long-standing endorsement and licensing relationship between Nike and Jordan, whereby Nike has developed and used many trademarks consisting in whole or part of Michael Jordan's name, image or likeness, which has caused the public to closely associate Jordan with Nike.

Nike argues that Mr. Nelson has no legitimate connection with Michael Jordan, and thus registration of the mark would falsely suggest to the public a connection with Jordan. Furthermore, the mark, when used on the goods at issue, is a name identifying a particular individual, namely Michael Jordan, whose written consent to register his name is not of record. It does not matter that the mark at issue is not Michael Jordan’s full name. See In re Sauer, 27 USPQ2d 1073 (TTAB 1993), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994) (BO, the recognized nickname of professional football and baseball star Bo Jackson, found to be so well known by the general public that use of the name BO in connection with sports balls would lead to the assumption that he was in some way associated with the goods or with applicant’s business); see also Reed v. Bakers Engineering & Equipment Co., 100 USPQ 196, 199 (PTO 1954) (“‘Name’ in §2(c) is not restricted to the full name of an individual but refers to any name regardless of whether it is a full name, or a surname or given name, or even a nickname, which identifies a particular living individual...”).

For those who may feel that Nelson did not intend for the name MIKE in this case to be a reference to Michael Jordan, I would point out that one of Nelson’s other pending applications (link here) is for the below design mark (also for clothing):

Nike also opposed registration of this design, which bears a striking resemblance to Nike's own registered design mark of the profile of a well-known former basketball player (pictured below). See Nike, Inc. v. Scott Nelson, Opposition No. 91182458 (T.T.A.B. February 14, 2008). If the outcome of that opposition is any indication, Nelson is not going to fight Nike over MIKE.

Nike's "Air Jordan" logo

Seventh Circuit affirms District Court dismissal of trademark infringement dispute between JAPONAIS restaurant founders

On February 22, 2008, the Seventh Circuit Court of Appeals affirmed a district court’s dismissal of a derivative trademark infringement claim brought by a co-founder of the Chicago restaurant Japonais against his fellow co-founders using the Japonais name and trade dress at additional restaurant locations outside Chicago. See Segal v. Geisha NYC, LLC, Appeal No. 06-2897 (7th Cir. February 22, 2008). A copy of the decision can be downloaded here.

Jonathan Segal was one of four founders of the Chicago restaurant Japonais Chicago, described as an up-scale restaurant and lounge serving a fusion of Japanese and European cuisine. Segal developed the concept for Japonais along with Rick Wahlstedt. They hired culinary expert Miae Lim and architect Jeffrey Beers to assist in developing the restaurant.

As part of the establishing of the first Japonais restaurant in Chicago, the four founders formed two Delaware LLCs -- Geisha Chicago, LLC (“Geisha Chicago”) and Hospitality Chicago, LLC (“Hospitality Chicago”). Geisha Chicago was set-up to own the Japonais Chicago restaurant and all intellectual property related to the Japonais name and design. In Geisha Chicago’s operating agreement, Hospitality Chicago is named as “Managing Member” and is the sole member listed on the agreement’s member schedule. The agreement also gives Hospitality Chicago complete authority to manage the business of Geisha Chicago and to utilize any asset of Geisha Chicago.

The four founders were the only named members in the operating agreement of Hospitality Chicago. The same agreement also included provisions which allowed at least two of the four founders to open a restaurant outside of Chicago using the Japonais Chicago restaurant concept provided that notice and opportunity to participate was given to the other founders.

In 2006, Wahlstedt, Lim, and Beers decided to open additional Japonais restaurants in New York City and Las Vegas which used the Japonais Chicago concept. When Segal discovered that his three co-founders had expanded the restaurant outside of Chicago (apparently without notifying him or allowing him to participate), he filed a lawsuit (on behalf of himself and derivatively on behalf of Geisha Chicago and Hospitality Chicago) stating ten state-law claims and one federal claim for trademark infringement under Section 43(a) of the Lanham Act (15 U.S.C. §1125(a)). Segal alleged that the defendants misappropriated the Japonais name and trade dress in violation of §1125(a).

In June 2006, the district court granted the defendants’ motion to dismiss the trademark infringement cause of action on the grounds that, as a matter of law, there could be no likelihood of confusion as to source or affiliation because of the clear language of the Hospitality Chicago operating agreement which allowed any two founders to use the Japonais Chicago concept and intellectual property in any expansion of the restaurant outside Chicago. After dismissing Segal’s federal claim, the district court dismissed the remaining state law claims under 28 U.S.C. §1367(c)(3) for lack of pendent jurisdiction. While Segal filed a separate action in Illinois state court, he also filed an appeal of the district court's dismissal of his trademark infringement claim.

The Court of Appeals affirmed the district court’s decision to dismiss the trademark infringement claim as well as the state law claims.

On appeal, Segal argued that Hospitality Chicago’s operating agreement was only meant to govern relations between the members and was not relevant to whether the defendant’s were authorized to use the Japonais Chicago’s intellectual property. The court, however, rejected Segal’s argument, finding that, under Delaware law, an LLC operating agreement allows the members to delegate control over the company by contract. See Del. Code Tit. 6, §18-1101(b). The court agreed that Geisha Chicago’s operating agreement gave Hospitality Chicago total control over Geisha Chicago’s assets, including use of the Japonais Chicago intellectual property. As such, it was relevant to review the provisions of the Hospitality Chicago operating agreement to determine how Geisha Chicago’s intellectual property could be controlled.

In reviewing the Hospitality Chicago operating agreement, the court agreed that the people who controlled the companies behind Japonais New York and Japonais Las Vegas, namely Wahlstedt, Lim, and Beers, were expressly authorized to use the Japonais Chicago intellectual property under such agreement for restaurants outside of Chicago.

Therefore, because Geisha Chicago, through its managing member, Hospitality Chicago, had authorized the three expanding founders to use the Japonais Chicago intellectual property owned by Geisha Chicago, the court agreed that Segal’s trademark infringement claim failed as a matter of law because Segal could not establish that use of the mark by Japonais New York and Japonais Las Vegas is likely to cause confusion with Japonais Chicago among consumers because they are authorized expansions of the same restaurant concept and share three of the same founders:

“[W]here the trademark holder has authorized another to use its mark, there can be no likelihood of confusion and no violation of the Lanham Act if the alleged infringer uses the mark as authorized. See ITOFCA, Inc. v. MegaTrans Logistics, Inc., 322 F.3d 928, 940 (7th Cir. 2003) (“A licensee infringes the owner’s copyright if its use exceeds the scope of its license.” (internal quotation marks and citations omitted)); Am. Legion v. Matthew, 144 F.3d 498, 499 (7th Cir. 1998) (“Without confusion about source, sponsorship, or affiliation, there is no possible claim under . . . § 1125(a).”); see also McDonald’s Corp. v. Robertson, 147 F.3d 1301, 1307 (11th Cir. 1998) (“[I]n order to prevail on a trademark infringement claim, a plaintiff must show that its mark was used in commerce by the defendant without the registrant’s consent and that the unauthorized use was likely to deceive, cause confusion, or result in mistake.”).

Slip op. at 7-8.

Finally, the court agreed that since Segal’s pendent state law claims were based solely on the district court’s supplemental jurisdiction, the district court properly relinquished its jurisdiction over such state law claims under 28 U.S.C. § 1367(c)(3) once Segal’s sole federal claim was dismissed. See Williams v. Rodriguez, 509 F.3d 392, 404 (7th Cir. 2007) (citing Wright v. Associated Ins. Cos., 29 F.3d 1244, 1251-52 (7th Cir. 1994)).

Vegas™Esq. Comments:
The court seems to gloss over the fact that the Hospitality Chicago operating agreement apparently required notice be given to Segal as well as an opportunity to participate in order to be authorized to expand the restaurant outside of Chicago – and that Segal apparently never received such notice and opportunity to participate from the three expanding founders. Under the agreement, if such steps were not taken, then were the three expanding founders legitimately authorized under the agreement to have used the Japonais Chicago intellectual property in restaurants outside of Chicago?

This case serves as an important reminder of how trademark law and corporate law can become intertwined and how anyone becoming involved in a business venture with others should be careful in how the business is structured and the governing documents dictating the relationships among the business partners.

The Naked Cowboy Sues Over Cartoon M&M Ad Featuring His Likeness

Numerous news stories over the past few days (New York Post, CNN, and MSNBC) summarize very well the trademark infringement lawsuit filed by Robert Burck (better known as "The Naked Cowboy") against Mars, Incorporated, the makers of M&Ms candy, and Chute Gerdeman, Inc., the alleged creator of the a cartoon M&M ad campaign, which included an M&M street performer that Burck alleges resembles his "Naked Cowboy" likeness (pictured above). See Burck v. Mars, Incorporated et al, Case No. 08 Civ. 01330 (S.D.N.Y. Filed February 11, 2008). The complaint can be downloaded here.



Burck obtained a registration for the mark NAKED COWBOY for various entertainment services on April 9, 2002. He obtained second registration on September 2, 2003, for a design mark resembling The Naked Cowboy’s likeness (pictured below) for various clothing items including, of course, underwear.

One thing I did learn from this lawsuit (although its probably well known to those living in New York City and other major metropolitan areas) – the term "busking" (the complaint calls "The Naked Cowboy" the most famous busker in the entertainment capital of the world).

Of course, the complaint does not answer the one question that we have always wondered – why does he call himself the "naked" cowboy? Shouldn’t he be named the "white underwear wearing" cowboy (admittedly, not as catchy).

Looks like "The Naked Cowboy" is going to be able buy some clothes with the nice monetary settlement that he will undoubtedly work out with Mars and Chute Gerdeman.

Company refiles trademark infringement lawsuits against two companies over Bob Marley name and likeness

While I’m not really a fan of the late reggae musician Robert Nesta Marley (aka Bob Marley), a lot of people are and this fame has made the late musician’s name and likeness very valuable to his heirs.

A company named Fifty-Six Hope Road Music, Ltd. (“Fifty-Six Hope Road”), a Bahamas International Business Company which is owned and operated by Marley’s 12 children, owns the intellectual property rights to Bob Marley’s name and likeness.

Fifty-Six Hope Road obtained a federal trademark registration for the mark BOB MARLEY on May 16, 2000 for eleven classes of goods, including T-shirts, jewelry, greeting cards, wallets, mugs, and smoking pipes. Fifty-Six Hope Road entered into a licensing agreement with Zion Rootswear LLC (“Zion”), a Florida corporation, granting Zion an exclusive worldwide license to use the Bob Marley intellectual property on various goods.

The companies have a history of rigorously enforcing these trademark rights. See article here about one past trademark infringement lawsuit and here about the well-publicized dispute with Verizon over Marley-based ringtones.

In the last week, the companies have filed two new trademark infringement lawsuits in the U.S. District Court for the District of Nevada going after a Canadian jeans company and a movie poster company.

The first suit was filed on January 18, 2008 by Fifty-Six Hope Road and Zion against Fame Jeans, Inc. and Charles Freidman . See Fifty-Six Hope Road Music, Ltd. et al v. Fame Jeans, Inc. et al, Case No. 08-CV-00082 (D. Nev.). The second suit was filed on January 23, 2008, by Fifty-Six Hope Road and Zion against A.V.E.L.A., Inc. (the Art and Vintage Entertainment Licensing Agency) and Leo Valencia. See Fifty-Six Hope Road Music, Ltd. et al v. A.V.E.L.A., Inc. et al, Case No. 08-CV-00105 (D. Nev.).

Without reading the complaints, the lawsuits most likely allege registered trademark infringement (15 U.S.C. §1114), federal trademark infringement and unfair competition (15 U.S.C. §1125(a)), and common law trademark infringement arising from defendants' sale of clothing and posters displaying Marley’s name (a registered trademark), picture, or some other likeness.

One strange aspect about these new lawsuits is that the defendants in these two lawsuits are the same named defendants from a previous trademark infringement lawsuit filed by Fifty-Six Hope Road and Zion on February 14, 2007. See Fifty-Six Hope Road Music, Ltd. et al v. Fame Jeans et al, Case No. 07-CV-00194 (D. Nev.). That case, however, was voluntarily dismissed by Fifty-Six Hope Road and Zion on November 29, 2007. I'm sure the companies had their reasons for dismissing the prior suits and refiling them separately.

Clint Eastwood files lawsuit over “The Eastwood” home theater chairs

On January 16, 2008, Clint Eastwood filed a lawsuit in the U.S. District Court for the Central District of California against Palliser Furniture, Ltd, Palliser Furniture Corp. and several John Does (together “Palliser”) over a line of home theater chairs manufactured and sold by Palliser under the name “The Eastwood.” See Clint Eastwood v. Palliser Furniture, Ltd et al, Case No., 08-CV-00266 (C.D. Cal.). A copy of the complaint (courtesy of TMZ) can be downloaded here.

Eastwood’s lawsuit follows a similar lawsuit against Palliser filed in the same court on November 20, 2007, by the Executors of the Estate of Marlin Brando. See Morris Medavoy, et al v. Palliser Furniture Ltd., et al, Case No. 07-CV-07595 (C.D. Cal. November 20, 2007). At issue in that case is a similar line of home theater chairs made by Palliser named “The Brando” (apparently now renamed Sequelle). A press release from the Marlon Brando Estate regarding the dispute can be read here (although it should be noted that the press release discusses the filing of a lawsuit dated March 23, 2007, and may be referring to an earlier court action that apparently was unsuccessful because otherwise, why would the Marlon Brando Estate be pursuing a similar action in federal court eight month s later).

The Eastwood

According to Eastwood’s complaint, Palliser, a Canadian-based major manufacturer of home furnishings distributed throughout the Western Hemisphere, has been willfully manufacturing and selling “The Eastwood” home theater chair without Eastwood’s permission. Much of the complaint focuses on describing Eastwood’s film background and fame. The complaint notes that Eastwood has a long history of rejecting solicitations from third parties to license his name, image and likeness for commercial purposes so that he can use his publicity rights and goodwill associated therewith for his own motion picture and entertainment projects as well as his own personal ventures. Some of Palliser’s other home theater chairs named after celebrities noted in the complaint include “The Cagney,” “The Cooper,” “The Bronson,” and “The Connery.”

The complaint sets forth three causes of action: 1) false designation of origin and false description under Section 43(a) of the Lanham Act (15 U.S.C. §1125(a)); 2) violation of Eastwood’s right of publicity in his name in violation of California Civil Code §3344; and 3) common law violation of Eastwood’s right of publicity in his name. Eastwood claims that Palliser’s use of the name “Eastwood” on its chairs will create a false impression that “The Eastwood” home theater chairs are endorsed or associated with Eastwood and constitutes a misleading description of Palliser’s goods. Eastwood also alleges that Palliser committed such actions willfully in order to trade off of Eastwood’s reputation and goodwill. Eastwood further claims that Palliser’s intentional use of the name Eastwood is causing harm to his name by being falsely associated with Palliser’s home theater chairs.

In addition to injunctive relief, Eastwood seeks the usual damages under 15 U.S.C. §1117(a) (Palliser’s profits, damages, and costs) and also maintains that Palliser’s willful conduct makes the case exceptional entitling Eastwood to treble damages and attorney’s fees. Eastwood also requests damages, attorney’s fees, and punitive damages under California law.

Vegas™Esq. Comments:

Eastwood unquestionably has a strong mark in his own last name, especially with goods and services that are related to the movie industry (although one should note that there are many registrations for the mark EASTWOODfor other goods and services such as guitars and insurance brokerage services as well as a multitude of goods and services across four registrations held by Easthill Group, Inc.).

In addition, the goods are related albeit tenuously – Eastwood’s name is commonly associated with the movies and the goods at issue are for home theater chairs (no doubt purchased by movie fans). And to the extent that Palliser named its chairs “The Eastwood,” then the marks are similar – although if you click on the above links, you will note that Palliser appears to be changing the name of its various lines of chairs and moving away from “The …” celebrity names (see also here).

I do question whether the relevant consumers in this case – wealthy homeowners with home theater systems – would honestly believe that these goods (home theater chairs) are truly endorsed by the individuals after which they are named. In addition, home theaters are not cheap – consumers purchasing these chairs are likely to exercise a high degree of care. They will select a chair based on its features – and not because of the “movie actor” after which it is named. The names of these chairs would be recognized by such movie-fan consumers as playful references to famous movie actors – not as an endorsement by those stars. In addition, I doubt that either Eastwood or Brando’s estate is going to be branching out into home theater furnishings anytime soon (although Brando’s estate does have a trademark application for THE BRANDO pending for towels, spa products, and clothing, which was recently published for opposition).

While Eastwood may be able to unearth evidence to the contrary, it would seem that Palliser’s intent in choosing to name its movie theater seats after famous movies stars was not to take advantage of the goodwill in Eastwood’s name, but rather to appeal to the interests of movie aficionados (Palliser’s primary customers for such seats) who are likely to be fans of such great actors as Marlon Brando, Clint Eastwood, James Cagney, and Sean Connery, but who are not likely to buy a particular theater chair simply because a particular celebrities name is tied to it.

So while I would like to believe that the factors tend to favor a finding of no likelihood of confusion, I recognize that Eastwood asked for a jury trial for a good reason, namely so that Eastwood can make such arguments before a group of jurors who will certainly have heard of Eastwood and who may be more easily swayed into finding a likelihood of confusion under the circumstances.

As for Eastwood’s right of publicity claim, Palliser did knowingly use Eastwood’s name on its products without Eastwood’s permission and did so in part to take advantage of the Eastwood's movie actor, which doesn’t bode well for Palliser. However, California Civil Code §3344(e) does provide an exception for the use of a person’s name without such person’s consent even though the use is commercially sponsored. Of course, it becomes a question of fact (for the jury in this case) whether or not Palliser’s use of the name “Eastwood” was “so directly connected with the commercial sponsorship” as to create a use for which consent is required.

Of course, the above assumes that this case even goes to trial, which I can’t imagine to be the case given the steps Palliser is taking to move away from such allegedly infringing use actors’ names for its chairs. More than likely, the parties reach a confidential settlement whereby Palliser agrees to stop using the name and possibly pays some monetary compensation for past infringing use (perhaps a donation to Eastwood's favorite charity).

“A man’s got to know his limitations.”
- Clint Eastwood as Dirty Harry Callahan in “Magnum Force”