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Category Archives: Counterfeits

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Will Purple Reign, as a Color Trademark?

Posted in Advertising, Articles, Branding, Counterfeits, Dilution, False Advertising, Famous Marks, FDA Approval, International, Law Suits, Look-For Ads, Marketing, Non-Traditional Trademarks, Sight, Trademarks

Today, we’re not talking about that Purple Rain, that Color Purple, or those Purple People Eaters, and we’re especially not talking today about Purple Gloves, Purple Bags, Purple Jackets, Purple Candy Wrappers, or Purple Tags, no today, we’re talking about “The Purple Pill,” a/k/a Today’s Purple Pill — AstraZeneca’s blockbuster Nexium brand acid reflux medication…. Continue Reading

Tory Burch Protects Her Brand

Posted in Counterfeits, Famous Marks, Fashion, Infringement, Law Suits, Mixed Bag of Nuts, Trademarks

The barrage of counterfeit jewelry products bearing the “Isis Cross” will cease! After more than two years of battling with counterfeiters, Tory Burch, LLC and its subsidiary (“Tory Burch”) secured a $41 million judgment and permanent injunction against jewelry company Lin & J International, Inc. and its owners (“Lin & J”).   The judge found that… Continue Reading

Washington’s NFL Team and U.S. Customs

Posted in Articles, Branding, Counterfeits, Loss of Rights, Marketing, Social Media, Trademarks, TTAB, USPTO

Last week the NFL franchise that plays football near — but not in — our Nation’s Capital, was dealt another significant legal and public relations blow that would have any rational brand owner working overtime on its re-branding efforts. Professor Christine Haight Farley, at American University’s Washington College of Law, summarizes the Amanda Blackhorse decision… Continue Reading

Britto v. Apple: Utilizing the IP Kitchen Sink

Posted in Advertising, Articles, Branding, Copyrights, Counterfeits, Dilution, Fashion, Infringement, Marketing, Non-Traditional Trademarks, Sight, Trademarks

Can an artist’s particular style of art constitute both copyrightable expression and trade dress? Brazilian artist Romero Britto has filed suit against two artists known as “Craig & Karl” for copyright infringement — and since the artists’ work was featured by Apple, Britto has sued the company as well for trade dress infringement. Britto’s complaint, filed in the… Continue Reading

All-Star Tips To Avoid Infringement Litigation

Posted in Agreements, Branding, Counterfeits, Famous Marks, Fashion, Infringement, International, Trademarks, USPTO

Shoes are always in the news. From a fashion standpoint, Nike has made headlines this week, with a re-release of the Classic Cortez running shoe (aka, the Forrest Gump shoe) along with the second edition of the LeBronald Palmer.  And yes, the LeBronald Palmer is exactly what it sounds like, LeBron James creating a shoe… Continue Reading

Converse: Stomping Out Counterfeits through Int’l Trade Commission Proceedings

Posted in Articles, Counterfeits, Famous Marks, Fashion, Infringement, Law Suits, Non-Traditional Trademarks, Product Configurations, Trademarks, TTAB, USPTO

Earlier this week, Converse launched an all-out offensive to combat what it considers counterfeit and knock-off versions of its Chuck Taylor All-Star line of sneakers. Reports peg the number as at least 22 separate lawsuits against more than 30 companies, both in district court and at the International Trade Commission (the “ITC”). The defendants read… Continue Reading

The C-word and IP Rights

Posted in Almost Advice, Copyrights, Counterfeits, International, Loss of Rights, Patents, SoapBox, Trademarks

No, not that c-word. The protection and enforcement of intellectual property rights involves a plethora of c-words:  copying, counterfeit, copyright, cease-and-desist, CIPO (the Canadian IP Office).   But the one I am referring to today is China. As the world becomes more interconnected and the global economic impact of China has significantly increased, intellectual property… Continue Reading

Bungle in the Beer Tapper Jungle?

Posted in Almost Advice, Articles, Branding, Copyrights, Counterfeits, Food, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Product Packaging, Sight, Trademarks, USPTO

The Sports Bar in the Mirage Resort & Casino, located in Las Vegas, Nevada, is currently sporting a pretty interesting collection of tap beers, from left to right: Bud Light, Goose Island Honker’s Ale, Stella Artois, Heineken, Dos Equis, Pacifico, Shock Top, Newcastle, Samuel Adams, Budweiser, Goose Island Indian Pale Ale, and Michelob Ultra. What really caught… Continue Reading

Is Tiffany Generic?

Posted in Branding, Counterfeits, Dilution, False Advertising, Famous Marks, Genericide, Law Suits, Sight, Trademarks

Genericide kills trademark rights.  It has been alleged that “Tiffany setting,” encompassing the famous TIFFANY mark owned by Tiffany and Company (“Tiffany”), is merely a generic term for a type of engagement ring. You may recall my DuetsBlog post regarding the lawsuit that Tiffany filed on Valentine’s Day against Costco Wholesale Corporation (“Costco”) to protect… Continue Reading

When Intent Matters in Trademark Matters

Posted in Almost Advice, Articles, Counterfeits, Domain Names, Fair Use, Infringement, Law Suits, Trademark Bullying, Trademarks

One of the unfortunate aspects of trademark practice is the permission that exists in the law to challenge the motives and intentions of people. Unfortunate, because this permission is frequently abused, especially by less experienced trademark counsel, or perhaps when the strength of a case doesn’t seem like enough without injecting an unhealthy dose of emotion into… Continue Reading

Building a Smarter Counterfeit Strategy

Posted in Almost Advice, Counterfeits, International, Trademarks, USPTO

When I have watched the ad below around some savvy marketing and supply-chain management folks, the reactions have been generally been in the  “wow – that’s really cool” vain.   IBM seems to really be doing something right with its ability to help companies prevent counterfeit product, and clearly it’s important enough to its customers… Continue Reading

My Namesake Sues To Protect Its Famous Mark

Posted in Branding, Counterfeits, Dilution, False Advertising, Famous Marks, Infringement, Law Suits, Sight, Trademarks

Coincidentally (or perhaps by design), Tiffany and Company (“Tiffany”) filed suit on Valentine’s Day against Costco Wholesale Corporation (“Costco”) to protect its trademark with respect to engagement rings.  We know from our prior post regarding Tiffany’s amicus brief filed in support of Christian Louboutin that Tiffany actively protects its brand. If you are like me,… Continue Reading

Luxury Products Go Logo-less?

Posted in Branding, Counterfeits, Famous Marks, Truncation

–Susan Perera, Attorney Over a year ago, Steve and I authored a piece in the Minnesota Business Journal discussing two-faced brands, these are brands that use both a formal trademark and a less formal, often truncated, trademark. Since then we have seen many brands move away from their historical trademark uses towards shorter truncated trademarks… Continue Reading

How Fashionable is the Louis Vuitton “Trademark Bully” Label?

Posted in Articles, Branding, Copyrights, Counterfeits, Dilution, Fair Use, Famous Marks, First Amendment, Infringement, International, Marketing, Social Networking, Trademark Bullying, Trademarks

There has been quite a flap surrounding the poster and invitation used by the University of Pennsylvania Law School to promote Penn Intellectual Property Group’s Fashion Law Symposium, scheduled for a week from tomorrow. The symposium appears to be designed as a serious affair, boasting an all-star cast of general counsel from the fashion industry, including those from… Continue Reading

Does the Trademark Office Need a Trademark Attorney?

Posted in Counterfeits, Infringement, SoapBox, Trademarks

–Dan Kelly, Attorney A few times each year, clients will call or write and inquire about some official-looking correspondence they’ve received about a trademark registration or application.  That happened this week, and here’s the top portion of the official-looking correspondence (redacted): You can see the full page here.  If you read the fine print, this… Continue Reading

Up On The Rooftop, Reindeer Pause, Out Jumps Good Old Counterfeit Clause.

Posted in Counterfeits

People obviously purchase substantial volumes of products over the holiday season. As much as this is a boon for legitimate retailers and manufacturers, it is also a boon for those unsavory Scrooges that choose to operate on the wrong side of trademark tenets. Let’s call them Counterfeit Clauses.  As a New York Times article recently reported, counterfeit merchandise is… Continue Reading

Stoners Are Not To Be Trusted

Posted in Counterfeits

It’s not every day that a fine news publication like The Onion dips its toes into trademark pool. Given this, I was pleasantly surprised to see this parody about troubling competition to Yellowstone National Park.   Granted, this article came out a couple months ago, but I still think its poignant. Although plainly presented for comedic purposes,… Continue Reading

Imitation Apple Stores and Trade Dress Protection

Posted in Counterfeits

–Susan Perera, Attorney Many companies have experienced issues with counterfeit products, but few have likely dealt with counterfeit stores. Over the weekend I was surprised to hear about counterfeit Apple Stores in China selling authentic Apple products. New reports identify up to five Chinese stores mimicking Apple’s iconic store appearance down to the white Apple logo,… Continue Reading

The World is Full of Scam Artists

Posted in Counterfeits, Infringement, SoapBox

–Dan Kelly, Attorney On a regular basis, we receive inquiries from clients about IP-related solicitations that they receive from third parties relating to things like renewing trademark registrations and domain names.  Typical solicitations are one-pagers with a patina of legitimacy, referencing a particular IP asset, the owner, then usually ending with the punch line of requesting… Continue Reading

Does Size Matter, When Identifying a “Trademark Bully”?

Posted in Counterfeits, Infringement, Law Suits, Trademark Bullying, Trademarks

Who says that being a large corporate trademark owner is one of the prerequisites to earning the emotionally-charged, pejorative, and ill-defined label “trademark bully“? Well, the original directive to the USPTO appears to assume that “trademark bullying” is a one-way street, disfavoring only large corporate trademark owners, and ignoring the possibility that individuals and small businesses are equally capable of deserving… Continue Reading

Shot in the Dark – the PPK Design Trademark

Posted in Advertising, Counterfeits, Famous Marks, Goodwill, Marketing, Non-Traditional Trademarks, Product Configurations, Sight, Television, Trademarks, TTAB

—Karen Brennan, attorney I found Fig. 1 (from what I am sure was a very valuable patent, although I could not locate it) to be very fitting for this post.  After three and half years, four Office Actions, a Petition to the Director and finally an appeal, our client’s product configuration mark for the PPK handgun… Continue Reading

When is a Shuffle Not an iPod Shuffle?

Posted in Advertising, Branding, Contracts, Counterfeits, Infringement, Marketing, Trademarks

–Dan Kelly, Attorney Here is a brand baiting gem spotted yesterday at a website called Daily Checkout: Unremarkable?  A deal, you say?  Well, the following disclaimer appears twice in the sidebar adjacent to this deal: And here is another feature pulled from the sidebar: Greeaat . . . an MP3 player that won’t work with… Continue Reading