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Category Archives: Dilution

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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

Yea or Neigh: Does “walmart.horse” Dilute the WALMART mark?

Posted in Advertising, Branding, Copyrights, Dilution, Fair Use, Famous Marks, Food, Infringement, Social Media, Squirrelly Thoughts, Trademarks

For every serious-minded, informative website out there (I submit for your consideration this august blog) there are countless others that lean more towards the absurd. The website “walmart.horse” is squarely in the latter column. But can something so lighthearted also constitute trademark infringement? According to Ars Technica, a cartoonist named Jeph Jacques (author of the… Continue Reading

Crafting an Effective Fair Use Defense

Posted in Advertising, Dilution, Fair Use, Famous Marks, Food, Infringement, Marketing, Trademarks

The beer industry is rife with trademark legal issues. We’ve discussed quite a few here, including disputes over brewery names, attempts to register as a trademark the design of a beer glass, or the longstanding issue of whether all alcoholic products are related for likelihood of confusion purposes. Because of the importance of the beer… Continue Reading

Take Down for “Chinatown”?

Posted in Advertising, Branding, Dilution, Fair Use, Famous Marks, Infringement, Sight, Trademarks

Famous brand owners, take note: a Turkish artist and designer named Mehmet Gozetlik recently released “Chinatown,” a mesmerizing series of photographs in which neon lights depict famous design marks, with the word mark replaced by its generic wording in Chinese.  Is your brand one of them? The Pepsi logo, for example, has been recreated in… Continue Reading

Likelihood of Confusion and/or Dilution?

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Infringement, Marketing, Technology, Trademarks

Let’s suppose you’re a non-profit like the NRA, you sell stuff on your NRAstore.com, and you’d like to promote the fact that your website has over 30 product demonstration videos available that can easily be viewed online by potential consumers before they buy stuff from you. Let’s also suppose that when you sell stuff, 100%… Continue Reading

An Energized Trademark Monster?

Posted in Advertising, Agreements, Articles, Branding, Dilution, Famous Marks, Law Suits, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

Three months ago we discussed a “trademark bullying” allegation against Monster Energy, detailed in a declaratory judgment complaint filed in Montana federal district court by energy-drink competitor Victory Energize. Last week, Law360 reported the case settled on confidential terms, and the claims were dismissed with prejudice, at Victory Energize’s request, so the “trademark bullying” charge… Continue Reading

Will Montana-Based Victory Energize Win Its “Trademark Bully” Charge Against Monster?

Posted in Articles, Branding, Dilution, Famous Marks, Food, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Trademark Bullying, Trademarks

Last week more allegations of “trademark bullying” appeared in the headlines. This time, Victory Energize, an energy drink company based in Missoula, Montana, is calling out Monster Energy for sending a cease and desist letter to Victory. Monster’s demand letter is said to charge Victory with infringement of Monster’s distinctive trade dress. So, what say you?… Continue Reading

(Subway) Eat Flesh, An Effective Parody?

Posted in Articles, Branding, Dilution, Famous Marks, Fashion, First Amendment, Guest Bloggers, Infringement, Law Suits, Trademarks

  This past weekend one of my sons said, “Dad, I have a good blog topic for you.” After he explained, it was clear, yes, son you do! So, he sent me the photo to the left. It is one that he recently snapped at a place that sells Halloween costumes.   As an aside, I love it… Continue Reading

Dethroning a Right to Register a Trademark?

Posted in Agreements, Articles, Branding, Contracts, Dilution, Famous Marks, Infringement, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

Last month, you will recall we wrote about the important difference between the right to register a trademark and the right to use a trademark, here and here. Despite the fact that in most cases, a “likelihood of confusion” test governs both determinations, the right to use and the right to register are not necessarily coextensive rights — defeating… Continue Reading

Brewing Brewery Brawl: Busch Not Happy with NATTY

Posted in Advertising, Branding, Dilution, Infringement, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

You know that beer that you would drink in a basement, but now that you acknowledge that you are actually an adult, you would not be caught dead buying in a liquor store or requesting at a bar or restaurant?  We’ve all got one.  Having spent my college drinking days in “the good land”, my… Continue Reading

IKEA översittare: Bully or Baloney?

Posted in Branding, Dilution, Domain Names, Fair Use, Famous Marks, First Amendment, Goodwill, Infringement, Marketing, Social Media, Trademark Bullying, Trademarks

I once spent 20 minutes trying to figure out whether I was installing a metal insert for an NYMÖ lamp upside down, or rightside up. I’m still not sure I ever installed it correctly, but it’s still working. So there. But a new IKEA översittare is getting a lot of attention on the internet, and… Continue Reading

Karl the Infringer: Parody of New Balance Sneaks Up on Lagerfeld

Posted in Branding, Dilution, Famous Marks, Fashion, Infringement, Law Suits, Marketing, Patents, Product Configurations, Squirrelly Thoughts, Trademarks

A sense of humor and a little lack of respect:  that’s what you need to make a legend survive. -Karl Lagerfeld on his “winning formula” Sometimes there is a news story that neatly weaves a bunch of DuetsBlog posts together like a Bottega Veneta shoe fabric design.  Sometimes that story comes from hard-hitting news authority… Continue Reading

Legal Marijuana: New Branding Opportunities, Same Old Infringement

Posted in Advertising, Branding, Dilution, Fair Use, Famous Marks, Infringement, Law Suits, Marketing, Trademarks

Whether driven by new laws or technology, companies and individuals always push the limits of the law during the industry’s formative years. Obvious examples like Napster come to mind, as well as the more dated example of the VCR. Out in Washington and Colorado, the new booming business of legal marijuana is no different. According… Continue Reading

Anticipation . . . But, Heinz is Not Keeping Melinda’s Habanero Ketchup Waiting

Posted in Articles, Branding, Dilution, Famous Marks, Food, Infringement, Law Suits, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks

Last month Heinz, a brand “synonymous with ketchup throughout the world,” and a seller of “650 million bottles of Heinz ketchup each year,” brought a federal trademark infringement and dilution lawsuit in Texas to enforce exclusive rights in the “famous” Heinz bottle design against Melinda’s Habanero Ketchup brand. Here is the Complaint and Exhibits A, B, C,… Continue Reading

Twilight Trademark Trial Now on Horizon

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Goodwill, Infringement, Law Suits, Marketing, Trademark Bullying, Trademarks, USPTO

Another father-daughter trip to Bath & Body Works (BBW) this past weekend revealed that his and her Twilight Woods personal body care products are still available for sale: Still, because ten days ago, the federal district court in the Southern District of New York rejected BBW’s attempt to have the trademark infringement and dilution claims —… Continue Reading

Burger With a Side of Fashion – Moschino spoofs McDonald’s

Posted in Dilution, Famous Marks, Fashion, Trademarks

You may have previously read my post about apparel companies spoofing luxury fashion brands, but in Milan, one luxury fashion brand spoofed brands perhaps a little more familiar to the average Joe or Jane. Moschino’s capsule collection, “Fast Fashion – Next Day After The Runway,” drew some criticism  for its treatment of some of these… Continue Reading

Oz The Saying Goes…

Posted in Branding, Copyrights, Dilution, Fair Use, Famous Marks, Goodwill, Loss of Rights, Television, Trademarks, TTAB, USPTO

There’s no place like home. Just be careful where and how you say it. It is common knowledge among lawyers that copyright protection does not normally extend to titles, words, or short phrases. Movies, politicians, and our family and friends constantly quote books, movies, and famous politicians, actors, and others. From a trademark perspective, we see famous quotes… Continue Reading

PAPER in a Digital Age

Posted in Almost Advice, Branding, Dilution, Famous Marks, Social Media, Social Networking, Trademark Bullying, Trademarks

On the cusp of its 10 year anniversary, Facebook announced the “Facebook Paper” app – a combination of social networking and content feed that seems strikingly similar to one of my favorite apps Flipboard, with some of the Facebook features included in the app.  While there may be a patent dispute on the horizon there,… 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

I <3 Ur Emoticon, But Does It Indicate Source :-/

Posted in Advertising, Branding, Dilution, Non-Traditional Trademarks, Social Media, Trademarks

In a world where communications are shared in a space of less than 140 characters, emoticons are often a part of the lexicon for most texters, tweeters, gamers, and smartphone screen tappers.  I have an app, Emoji, that turns my phone’s keyboard into a glorious emoticon playground.  Facebook even lets you add an emoticon to… Continue Reading

The True Meaning of C [hristmas]

Posted in Branding, Dilution, Famous Marks, Goodwill, Infringement, Marketing, Squirrelly Thoughts, Trademarks, TTAB, USPTO

Yes, it has finally arrived: the end of December. Whether you’re someone who views the day as bitter sweet, dreading the day when the dirty looks from your neighbors force you to finally take down your decorations in February, or whether you were ready for it all to be the over the very moment you… Continue Reading

iPhooey?

Posted in Advertising, Articles, Branding, Copyrights, Dilution, Famous Marks, Food, Infringement, Marketing, Trademarks

Apparently iPho by Saigon, a Vietnamese restaurant located in St. Paul, Minnesota, is quite good. The logo design is eye-popping, and dare I say clever, but does it cross one of the many legal intellectual property lines? We can all agree as to the source of the “inspiration” for this visual identity, right? Our little friend… Continue Reading