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Category Archives: Counterfeits

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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, Winthrop & Weinstine 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… 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

Seizing an Opportunity for Trademark Relief

Posted in Counterfeits

–Sharon Armstrong, Attorney In the vast majority of trademark infringement suits reported in the press, plaintiffs – whether they are trademark owners suing third parties for the unauthorized use of a mark or are third party users asking for a judge to declare that their use of a mark is lawful – generally seek injunctive… Continue Reading

First iPhone, Now iPad: Guessing at Apple’s Trademark Clearance Strategy

Posted in Branding, Counterfeits, Dilution, Infringement, Marketing, Trademarks

–Dan Kelly, Attorney Can you spot the genuine iPad? Back in July, I blogged about my then-discovery that Apple did not own the federal trademark registration for iPhone.  Needless to say, when I heard about Apple’s new iPad product, I just had to see if they were out in front in securing trademark rights to… Continue Reading

Testing Trademark Law: U.S. Chamber of Commerce v. The Yes Men

Posted in Counterfeits, Dilution, Domain Names, Famous Marks, First Amendment, Infringement, Law Suits, Trademarks

–Dan Kelly, Attorney Last week, a group calling themselves The Yes Men apparently perpetrated an elaborate hoax to usurp the corporate persona of the United States Chamber of Commerce, to the point of publishing a fake website and holding a press conference at the National Press Club, posing as the Chamber itself.   (Image of genuine website… Continue Reading

Good Luxo

Posted in Branding, Counterfeits, Dilution, Fair Use, Law Suits, Loss of Rights, Product Configurations

Luxo AS, a Norwegian light manufacturer and distributor, has sued Disney and Pixar et. al. asserting various trademark-related claims arising from Disney’s and Pixar’s use of the LUXO trademark.  In an always interesting case of trademark law/branding meets fair use, Luxo has alleged that Disney/Pixar’s use of "Luxo Jr." to identify the "hopping lamp," which has been the corporate mascot of Pixar… Continue Reading

New York Court Provides No Assistance To “The Little Blue Box” Company

Posted in Counterfeits, Dilution, Infringement, International, Product Packaging, Sight, Trademarks

I, like most women, want a present in a little blue box from Tiffany & Company (a/k/a Tiffany & Co.) This is not just because the company bears my name (I only wish I were an owner of the company), but because Tiffany & Co.’s exquisite jewelry is associated with the fabulous blue box.  Tiffany &… Continue Reading

Don’t let them eat bonbons!

Posted in Counterfeits, Famous Marks, Food, Product Packaging, Trademarks

–Sharon Armstrong, Attorney French customs agents seized 10 tons of counterfeit chocolate bonbons. According to the French customs office, the chocolates were low-quality copycats of the Italian-made Ferrero Rochers. Popular in the U.S. as well as Europe, Ferrero Rochers candies are known for nestling in elegant, individual gold foil wrappers and then inside jewel-shaped clear… Continue Reading