Jones Day Continues War on Free Speech by Opposing Amicus Brief in Trademark Infringement Lawsuit Against Blockshopper

Paul Alan Levy provides an update (link here) on the Opposition filed by Jones Day opposing the Motion for Leave to File the Amicus Curiae Brief in Support of Blockshopper.com’s Motion to Dismiss filed by Public Citizen, the Electronic Frontier Foundation, Public Knowledge and Citizen Media Law Project (a brief that has received overwhelming praise among the trademark law community – its impact evident by Jones Day’s quick action to exhaust any effort to prevent its consideration by the court). Techdirt also comments here.

In short, Jones Day, as part of its ongoing battle to move forward with its absurd trademark infringement lawsuit against Blockshopper, is using additional absurd arguments (although not so absurd that Jones Day isn't able to make them appear nonfrivolous) to oppose the filing of the Amicus Brief. One has to wonder – if Jones Day is truly confident in its underlying legal position, why would it be concerned at all about an amicus brief? [Comment—Methinks Jones Day doth protest too much.

The “friends” supporting Blockshopper have already filed their Reply in Support of their Motion for Leave to File Their Amicus Brief arguing against the points made in Jones Day’s brief.

Wine and Dine Corporation Files (and then Withdraws) $250 million Cybersquatting Lawsuit

This lawsuit makes you wonder “What do you think really happened?”

On September 19, 2008, Wine and Dine Corporation filed a $250 million lawsuit against MDNH, Inc., Marchex, Inc. and Brendhan Hight in the U.S. District Court for the District of Nevada. See Wine and Dine Corporation v. MDNH, Inc. et al, Case No. 08-cv-01259 (D. Nev.)

Unfortunately, I can’t provide my usual level of details on the lawsuit because it turns out that the lawsuit was administratively terminated today and the complaint no longer available on PACER. The docket indicates it was terminated on the basis that the case was "opened in error by counsel."

Of course, in the fast-paced world of the Internet, it didn’t take long for news of this lawsuit to start generating buzz amongst those websites and forums that monitor and discuss domain-name related stories and lawsuits. See, for example, here and here .

What we can glean is that Wine and Dine (or more accurately Wine and Dine Properties Ltd.) owns the federal registered mark WINE & DINE for magazines in the field of food and spirits – registered since 1995 (with date of first use as early as September 24, 1993). The company publishes the online magazine Wine and Dine. As for MDNH, it is the named owner of the website http://www.wineanddine.com/, which was originally purchase in August 2000 and is currently just set up as a web-directory website with the typical pay-per-click links (courtesy of Marchex). Brendhan Hight is the named registrant contact for the domain.

Thus, the lawsuit would appear to be your standard cybersquatting lawsuit (except for the $250 million request for damages). But unless someone out there was able to nab a copy of the complaint before it was removed, I guess we’ll never know – unless the lawsuit is filed again.



[Full Disclosure: My current law firm has performed some services related to trademark maintenance and assignments on behalf of a company that previously owned the subject mark.]

Weight Watchers Sues Campbell Soup Over Weight Watcher’s POINTS

On September 16, 2008, Weight Watchers International, Inc. (“WWI”) filed a trademark infringement lawsuit against Campbell Soup Company (“Campbell”) in the U.S. District Court for the Southern District of New York. See Weight Watchers International, Inc. v. Campbell Soup Company, Case No. 08-cv-8014 (S.D.N.Y.). A copy of the complaint can be downloaded viewed at The Trademark Blog.

WWI is famous for its diet program marketed under the WEIGHT WATCHERS mark. Since 1997, one of WWI’s diet program (the “Flex Plan”) has involved a “Points” system whereby Weight Watcher dieters are given an individual “Points” budget and all food items are assigned a particular “Points” value based on WWI’s own derived formula (pictured below).

p = Points
c = Calories
f = Fat Grams

r = Dietary Fiber Grams

WWI has even registered the mark POINTS for various goods and services including for “food nutrition consultation and advice.”

In July 2008, Campbell introduced a line of “light” soups marketed under its “Select Harvest” brand name. As part of its marketing strategy, Campbell apparently has labeled (or will be labeling) these soups with the “Weight Watcher Points” value as calculated by Campbell according to WWI’s formula. Campbell is also marketing its soups on retail store display racks and online.

Campbell attempted to protect itself by having the following disclaimer on the can’s label as well as on its website:

WEIGHT WATCHERS®, POINTS®, and POINTS VALUE® are registered trademarks of Weight Watchers International, Inc. The number of POINTS® provided here was calculated by Campbell's based on published Weight Watchers International, Inc. information and does not imply sponsorship or endorsement of such number of POINTS® or Campbell's® products by Weight Watchers International, Inc.

However, WWI is apparently unsatisfied with such a disclaimer and feels that Campbell is improperly using without authorization WWI’s trademarks and its reputation and goodwill in the weight-loss industry in order to market its Select Harvest Light product line to consumers trying to lose weight. WWI further argues that consumers are likely to be confused into believing that WWI has approved Campbell’s use of its marks on Campbell’s Select Harvest Light soup products.

WWI sent Campbell a cease and desist letter on August 13, 2008. Campbell responded to WWI’s letter on September 9, 2008, but the complaint does not provide any insight into that response. According to WWI, Campbell is already stocking grocery store shelves with its Select Harvest Light soup products having the infringing label.

WWI’s causes of action are (1) Registered Trademark Infringement under 15 U.S.C. §1114, (2) Unfair Competition/False Designation of Origin under 15 U.S.C. §1125(a), (3) Trademark Dilution under 15 U.S.C. §1125(a), (4) Common law trademark infringement, (5) Common law unfair competition, (6) Dilution under New York law, (7) Unjust enrichment, and (8) Breach of Contract.

The breach of contract cause of action relates to a February 2006 Permitted Use Agreement between WWI and Campbell to which WWI listed the POINTS values for various Campbell's products in the 2006 version of its Complete Food Companion and in WWI's food database at http://www.weightwatchers.com/. According to WWI, one provision in the Agreement provided that Campbell agreed not to use any of the logos, trademarks, or copyrights belonging to WWI in any advertising, packaging, public relations and promotional materials, or in any other manner other than as set forth in the Agreement. Another provision in the Agreement specifically stated that WWI’s inclusion of Campbell's products in its publication and food database was not an endorsement of Campbell's products and that Campbell may not use WWI’s trademarks to suggest any such endorsement. Campbell further agreed not use WWI’s trademarks, including the POINTS values of Campbell’s products, in any advertising or promotional materials (including online websites) or on any packaging and may not provide information to consumers about a POINTS value of its products in any manner without WWI’s express approval. The parties entered into a second Permitted Use Agreement for the 2008 version of WWI's Complete Food Companion, whereby Campbell agreed not to use WWI’s trademarks in a manner that would create a likelihood of confusion as to the source of any products or services or as to the sponsorship or endorsement of any products or services. WWI claims that Campbell’s use of its trademarks is in breach of these agreements.

In addition to seeking injunctive relief, WWI requests damages in the amount of Campbell’s profits, treble damages, attorneys' fees and costs, and punitive damages.

UW settles its trademark infringement lawsuit with Washburn over “Motion W” mark

I previously wrote (link here) about the trademark infringement lawsuit by the Board of Regents of the University of Wisconsin System (the “UW”) against Washburn University (“Washburn”) over the latter’s use of a W logo (pictured below) which UW claimed infringed on its so-called Motion “W” registered trademark (pictured above). See Board of Regents of the University of Wisconsin System v. Washburn University, Case No. 3:2007cv00672 (W.D. Wis.).



According to news reports (here and here), the parties reached a settlement agreement whereby Washburn can continue to use its logo so long as the university’s name, mascot name, or mascot symbol is transposed on it. No money reportedly changed hands. Washburn officials also report that they are currently working on developing a new logo for the future.

Seventh Circuit reignites AutoZone's trademark infringement claims against OilZone and WashZone

The Seventh Circuit reversed a district court’s decision finding no likelihood of confusion as a matter of law between the large automotive parts retailer AutoZone and an Illinois businessman, Michael Strick, doing business under the service marks Oil Zone and Wash Zone. See AutoZone, Inc. et al v. Strick et al., Appeal No. 07-2136 (7th Cir. September 11, 2008).



AutoZone, in business since 1987, became aware of Strick's two businesses in December 1998, but did not take any legal action against Strick until November 14, 2003 (a cease and desist letter was sent to Strick in February 2003). On cross-motions for summary judgment, the district court found that AutoZone's claims of trademark infringement and unfair competition failed as a matter of law because AutoZone had failed to produce sufficient evidence to show a likelihood of confusion between AutoZone's marks and Strick’s Oil Zone and Wash Zone marks – the district court found that the AutoZone mark and the Oil Zone and Wash Zone marks were "not similar enough for a reasonable finder of fact to find that there is a likelihood of confusion."

The Court of Appeals, reviewing de novo the district court's decision to grant summary judgment, found that the evidence was not so one-sided that it was proper for the district court to determine the issue of likelihood of confusion at the summary judgment stage, and thus reversed the district court’s decision. The Court reached this conclusion by doing its own analysis of each of the seven likelihood of confusion factors adopted by the Seventh Circuit. See Packman v. Chicago Tribune Co., 267 F.3d 628, 642 (7th Cir. 2001).

Regarding similarity of the marks, because the marks are all comprised of two words in the same font, slanted in the same direction, with “Zone” as the second word and the first letter of both words larger than the other letters in the marks, and feature bar designs that suggest movement or speed, the Court found that the marks in this case were similar enough that a reasonable finder of fact could find that a consumer would believe that the marks are connected to the same source. While the Court acknowledged some dissimilarities, “viewing the facts in the light most favorable to AutoZone, as we are required to do at this stage of the litigation, the prominent similarities between the marks may very well lead a consumer cruising down the street to believe, after driving past both parties' businesses, that Oil Zone and Wash Zone represented AutoZone's entry into the oil-change and car wash-services market.”

Regarding similarity of the products, the court stated that:

in light of the similarity of the marks, a reasonable consumer may very well be led to believe that Oil Zone and Wash Zone are AutoZone spinoffs. A retailer or manufacturer with a strong mark venturing into a related service industry would not be that surprising. And the automotive services provided by Strick's businesses are related to the automotive products sold at AutoZone stores. Indeed, there is even some direct overlap between AutoZone's products and the services provided by Strick's businesses: Strick provides car washes and oil changes while AutoZone sells car-wash and oil-change products. A reasonable consumer, taking into account the similarity of the marks, could therefore conclude from the relatedness of the goods and services provided by AutoZone, Oil Zone, and Wash Zone that the marks are all attributable to a single source. Thus, AutoZone has shown that a genuine dispute exists here as well.

Regarding the relationship in use promotion, distribution, or sales between the services of the parties, the court found that the evidence of record showed that both parties sell and promote their automotive goods and services in the Chicago area. Strick tried to argue that the nationwide scale of AutoZone’s services was different than his very localized offering of services, but the court noted that “trademark law makes no exception for the localized infringer.” As for differences in customers, the court held that “the record before us does not rule out the reasonable inference that a substantial congruence exists between the potential customer base in Naperville and Wheaton for AutoZone and Strick's businesses. AutoZone has therefore created a genuine factual dispute for this factor as well.”

Regarding customer degree of care, the district court had found this factor to support AutoZone’s argument for confusion and the Court agreed. AutoZone presented evidence that many of its automotive products are inexpensive and Strick did not present any evidence that his customers are particularly sophisticated. As such, a reasonable trier of fact could conclude that this factor favors AutoZone.

Regarding the strength of AutoZone’s mark, the Court found the evidence of record more than sufficient to support AutoZone’s argument that its AutoZone marks was strong. “The AutoZone mark is displayed prominently on more than 3,000 stores nationwide, and it has been the subject of hundreds of millions of dollars' worth of advertising since 1987.” Strick attempted to argue that the AutoZone mark is weak based on evidence that the word "Zone" is commonly found in other marks. However, Strick did not actually produce any evidence to show how extensively any of the third party marks that use the word "zone" have been promoted or become recognized by consumers in the marketplace, and thus evidence of such marks does not raise any question about the strength of AutoZone's mark. In addition, Strick’s argument fails to note that a mark must be viewed as a whole, and while the word “zone” by itself may be common, the same is not necessarily true for a composite mark like AutoZone, and a trier of fact could reasonably conclude that AutoZone's mark is strong and thus the factor of confusion would favor AutoZone.

Regarding the factor of Strick’s intent to palm off his services as those of AutoZone, while Strick testified that he was not aware of the AutoZone mark when he created the Oil Zone mark, the Court noted that in some circumstances, an intent to confuse may be reasonably inferred from the similarity of the marks where the senior mark had already attained great notoriety. In this case, “a reasonable trier of fact could conclude from Strick's experience in the industry, AutoZone's extensive marketing of its mark in the area where Strick did business, and the close similarity in design between the marks that Strick designed the Oil Zone mark with the intent to mislead consumers into believing that Oil Zone was somehow affiliated with AutoZone.” Whether Strick was honest in not being aware of the AutoZone mark was a decision for the trier of fact to decide.

The Court concluded that based on its own analysis of the likelihood of confusion factors, “a reasonable finder of fact could have found that consumers might be led to believe that AutoZone and Strick's Oil Zone and Wash Zone are affiliated with each other. AutoZone has therefore presented sufficient evidence to create a triable issue of fact on the issue of likelihood of confusion.” As such, it was improper for the district court to grant summary judgment with the existence of so many unresolved genuine issues of material fact, and the Court remanded the case back to the district court for trial.

Finally, Strick had argued at the district court and again a the Court of Appeals, that AutoZone’s claims were barred by the doctrine of laches – based on the delay between the time when AutoZone first became aware of Strick’s businesses in 1998 and when AutoZone finally took action in 2003. However, because a district court's decision to apply the doctrine of laches is discretionary and the district court declined to rule on the issue in its decision, the Court opted to let the district court determine on remand how it will exercise its discretion in this case.

Jones Day (Ab)Using Trademark Infringement Lawsuit To Stop Website From Posting Publicly Available Information

I admit that I missed this big trademark story when it was publicized last week.

In short, BlockShopper is a website which collects publicly available information on real estate transactions in Chicago, South Florida, Las Vegas, and St. Louis. For certain transactions, the website then goes one step further by linking that information with other publicly available information (e.g., publicly posted law firm bios) to write up news articles about such real estate transactions. When BlockShopper reported on expensive condos purchased by two law firm associates (Dan Malone and Jacob Tiedt), BlockShopper identified the two by their employment with “Jones Day” and linked their names to Jones Day’s web site. For that, Jones Day is now claiming trademark infringement. MediaPost ran an article yesterday about the dispute.

Several other bloggers have already eloquently posted comments and criticism on the lawsuit, so I will respectfully defer to them:

• Paul Levy’s blog post on Consumer Law and Policy Blog;
• Prof. Marc Randazza’s blog post; and
• Citizen Media Law Project write-up.

Citizen Media Law Project also has a page devoted to the filings in the lawsuit. The Amended Complaint can be downloaded here.

We’ve all heard the old law adage “A lawyer who represents himself has a fool for a client.” Well, Jones Day has proven the adage once again. One has to wonder what was going through the heads of the lawyers behind the complaint, which the public should be aware was signed by Jones Day lawyers, Paul W. Schroeder, Irene S. Fiorentinos, Meredith M. Wilkes, Robert P. Ducatman, and James W. Walworth Jr (Comment: Curious about why the complaint had so many attorneys named in it -- would you want your name associated with such a pleading?). As Prof. Randazza notes, Jones Day would have had a much less frivolous argument had it pursued a copyright infringement case rather than trademark infringement (for BlockShopper’s use of Jones Day’s pictures of its two associates). But Jones Day – at the foolish direction of its client – chose instead to assert trademark infringement.

If BlockShopper can get this case dismissed for failure to state a claim upon which relief can be granted, I hope that they pursue Rule 11 sanctions against the attorneys for submitting pleadings that contain frivolous arguments or arguments that have no evidentiary support. Unfortunately, such sanctions may be difficult to obtain even in light of the ridiculousness of this complaint given that a big law firm like Jones Day has enough resources to come up with non-frivolous arguments that its frivolous arguments are not frivolous and that its frivolous arguments do have evidentiary support. At a minimum (per Prof. Randazza’s suggestion), the attorneys should be required to attend remedial ethics counseling.

I would also add that if those two associates (or anybody) truly did not want the world to know about their real estate transactions, they had the option of not purchasing real estate at all or, alternatively, not purchasing real estate in their own name (i.e., purchase a house through a private trust or business entity that has no association to their own name). But no one can get around the fact that public real estate records are just that – public. Granted, the Internet and modern technology have made it a lot easier to gather, organize, and publicize it to the world – but that doesn’t change the fact that the information is public.

Frozen Yogurt Chain Pinkberry Goes After Fro-Yo Competitor Yogiberry

The Maryland Daily Record had an article the other day (link here) on the trademark infringement lawsuit filed in the U.S. District Court of the District of Maryland by Pinkberry, Inc., the company behind the Los Angeles based frozen yogurt chain, against Yogiberry, Inc., a frozen yogurt company with one store located in Olney, Maryland (and another shop set to open and a third in the planning stages). See Pinkberry, Inc. v. Yogiberry, Inc., Case No. 08-cv-02355 (D. Md. September 09, 2008). The Maryland Intellectual Property Law Blog also writes about the complaint (link here).

Pinkberry holds three federal registration for the mark PINKBERRY (both the word mark and a design mark (pictured above) for restaurant services as well as for the PINKBERRY word mark for frozen yogurt and smoothies) along with several other pending applications for the word PINKBERRY.


Yogiberry has its own federal registration for the design mark YOGIBERRY for retail frozen yogurt store, which issued on September 9, 2008 (the same day Pinkberry filed its lawsuit). Yogiberry also has an application pending for the word mark YOGIBERRY – published for opposition on September 2, 2008.

Pinkberry’s attorneys apparently contacted Yogiberry with a cease and desist letter in May of this year objecting to Yogiberry’s name (and likely its then pending applications for the mark YOGIBERRY) as well as its interior décor. Pinkberry claimed that Yogiberry’s name infringes its PINKBERRY marks and that Yogiberry infringes Pinkberry’s trade dress by intentionally copying Pinkberry’s pastel color scheme and modern furniture (because whenever you think of a frozen yogurt shop with pastel colors and modern furniture, you think of Pinkberry, right?).

After Yogiberry’s own counsel contacted Pinkberry’s attorneys about the necessary changes Yogiberry had to make to comply with Pinkberry’s demands, Yogiberry’s owner, My Huynh, changed the interior décor (repainting orange walls black, repainting yellow and white benches green and white, removing the menu from the wall and putting a TV in its place), but apparently not the name.

Why Pinkberry opted not to file an opposition against Yogiberry’s now registered trademark application back in June is a mystery? But rather than file an opposition against Yogiberry’s other pending application and a cancellation petition against Yogiberry’s issued trademark registration, Pinkberry has opted to go to court where it can seek injunctive relief against Yogiberry’s to stop its use of the Yogiberry name altogether.

This isn’t the first time Pinkberry has taken action to stop competiting frozen yogurt chains from using a “-berry” name. In 2006, Pinkberry sued a frozen yogurt shop named Kiwiberri for trademark infringement and apparently won (there is nothing to be found on http://www.kiwiberri.com/ and according to a report here Kiwiberri changed its name to Kiwibear earlier this year).

Of course, Pinkberry has had its own interesting legal issues, most notably the lawsuit (now settled) where a customer (who supposedly had ties to a competiting frozen yogurt chain) sued Pinkberry for misleading customers into thinking that its “dessert” was yogurt because in fact the ingredients in its “frozen yogurt” did not meet the California Department of Food and Agriculture regulations required in order for a store to label its product “frozen yogurt.” (see LA Times article here on the “Nogurt” controversy; see also related blog post here and here on the outcome).

One wonders if Yogiberry's case would be any stronger if the chain were endorsed by Yogi Berra. Of course, if asked about the outcome of this lawsuit, Yogi would probably say "It's tough making predictions, especially about the future."

[Update: The Los Angeles IP Trademark Attorney Blog has a writeup here on several lawsuits filed by Pinkberry in the Los Angeles area. ]