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Category Archives: Dilution

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Trademark Lessons for New Businesses from a Lawsuit Against a Colorado Juice Bar

Posted in Articles, Dilution, Fair Use, Infringement, Law Suits, Trademark Bullying, Trademarks

It is a big, exciting, and dangerous risk to start a new business. There were approximately 400,000 in 2014 (continuing a recent downward trend, according to Gallup). Most entrepreneurs know that the odds are stacked against them, as about 50% of new companies fail during their first five years (dig deeper into the numbers here.)…. Continue Reading

ELLE Fails to Un-ring Bell, DJ Action Sticks

Posted in Agreements, Articles, Branding, Civil Procedure, Contracts, Dilution, Law Suits, Marketing, Trademark Bullying, Trademarks, TTAB

Question for the day, how common is the given name Elle? I’m really not sure, I don’t believe I’ve ever personally known anyone with that name, and Mongabay doesn’t even include Elle in its listing of girl’s first names, but it does rank Ella (210), Elena (412), Ellie (1198), Elly (2802), and Ellamae (3514) among… Continue Reading

LARPing with Patent Trolls

Posted in Counterfeits, Dilution, Fair Use, False Advertising, First Amendment, Mixed Bag of Nuts, Patents, Social Media, Social Networking, Technology, Trademark Bullying

Live Action Role Playing (LARP or LARPing) usually involves Renaissance Festival worthy costumes, foam medieval weapons, and an intense dedication to not breaking character.  I can’t say I’ve ever had the privilege of participating in a LARP event, but I also can’t say I’d turn down the opportunity. A different kind of battle—the intellectual property… Continue Reading

Kylie v. Kylie

Posted in Dilution, Fashion, Mixed Bag of Nuts, Trademarks, TTAB

Kylie Minogue has filed an opposition to Kylie Jenner’s attempt to register the KYLIE mark in connection with “Advertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others,” claiming priority and likelihood of confusion, dilution by blurring, and dilution by tarnishment. The opposition calls… Continue Reading

Energizer Bunny to Drain Duracell’s Battery?

Posted in Advertising, Agreements, Articles, Branding, Contracts, Dilution, Famous Marks, Goodwill, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Trademarks

When I first heard last week about a trademark infringement lawsuit between Energizer and Duracell over pink bunny icons, my first thought was, Duracell is The Copper Top battery brand, what would motivate Duracell and how could Duracell possibly believe it had the legal right to use a pink bunny character in advertising and on… Continue Reading

Does Louis Vuitton’s Loss to a Parody Defense Justify an Award of Attorney Fees?

Posted in Dilution, Fair Use, Famous Marks, Fashion, First Amendment, Infringement, Law Suits, Trademark Bullying, Trademarks

Earlier this month the Southern District of New York granted the defendant’s Motion for Summary in Louis Vuitton Malletier, S.A. v. My Other Bag , Inc. The fashion giant had brought suit against a California company over its sales of a canvas tote bag that included an image that “evoked” Louis Vuitton’s classic handbag design…. Continue Reading

Louis Vuitton’s Other Lawsuit Was a Winner, but Loses to a Parody Defense – Again.

Posted in Dilution, Fair Use, Famous Marks, First Amendment, Infringement

Louis Vuitton is no stranger to trademark disputes. As a a manufacturer of handbags, wallets, and other luxury goods, the company has its hands full just addressing counterfeit products. However, like any other company, there is concern not just with “fakes,” but other products and services that may otherwise infringe or dilute Louis Vuitton’s trademark… Continue Reading

PATRÓN Tequila Bottle Design Enforcement?

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Infringement, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks, TTAB, USPTO

When we write about non-traditional trademark enforcement here on DuetsBlog, we almost always are referring to the protection of non-traditional marks like product configurations, product containers, product packaging, color marks, scent marks, tactile marks, and other non-verbal indications of source for a product or service. But, today we’re adding a little twist to our normal… Continue Reading

Imitating MILANO Cookies? Pepperidge Farm Remembers.

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, Food, Infringement, Look-For Ads, Marketing, Non-Traditional Trademarks, Product Configurations, Product Packaging, Taste, Trademarks, USPTO

When a company puts “DISTINCTIVE” on its own packaging, its usually a sign that it highly values its trade dress and product configuration rights. That’s certainly the case for Pepperidge Farm and its Milano cookies. The commercial bakery giant has taken aim at Trader Joe’s, the popular grocery chain, for selling house-branded “Crispy Cookies” that… Continue Reading

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

Wanted: Brand Deputies at the MN State Fair

Posted in Articles, Branding, Copyrights, Dilution, Fair Use, Famous Marks, Infringement, Product Packaging, Trademarks

The Minnesota State Fair continues to provide endless blog fodder for those who care about intellectual property. Last week, we wrote about a State Fair vendor concerned about its claimed, but unarticulated “intellectual property.” This week is a good reminder that brand owners have a lot to be concerned about what goes on with their… Continue Reading

Update on Battle Over the Navajo Mark

Posted in Dilution, Fair Use, Famous Marks, Fashion, Genericide, Infringement, Law Suits, Trademarks

In a surprising move last week, Urban Outfitters and its subsidiaries (collectively “Urban Outfitters”) moved to withdraw their motion for partial summary judgment on the secondary liability claims being brought against them by the Navajo Nation (“the Nation”). You might recall that I informed you about the lawsuit and a pending summary judgment motion brought… Continue Reading

Facebook vs. DESIGNBOOK: Is Anybody Watching?

Posted in Advertising, Branding, Dilution, Fair Use, Infringement, Social Networking, Technology, Trademark Bullying, Trademarks

One might assume that Facebook, the ubiquitous social media platform that aggregates and analyzes nearly 1 billion users‘ data, would know every nook and cranny of the USPTO trademark database.  Apparently, that’s not quite the case. Various news outlets have reported recently that a Vermont startup named Designbook has received the demand letter nasty-gram from Facebook (no reference to Facebook… Continue Reading

Meet Batman’s New (Trademark) Nemesis: Rihanna

Posted in Dilution, Famous Marks, Trademark Bullying, Trademarks, TTAB

After making (and remaking (and re-remaking)) movies, sequels, and prequels for nearly every comic book character in its library, it appears that DC Comics has finally found a new foe for its Batman franchise: music and fashion superstar Rihanna. The parties are squaring off at the Trademark Trial and Appeal Board over Rihanna’s application to… Continue Reading

Use of NAVAJO – Is Urban Outfitters Infringing or Not?

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

Battles continue to wage over use of the “Navajo” and “Navaho” marks in New Mexico federal court. The Navajo Nation (“the Nation”) sued Urban Outfitters and its subsidiaries, including one of my favorite retailers, Anthropologie, (collectively “Urban Outfitters”) in 2012. The suit is now heating up with motion practice. The complaint alleges that Urban Outfitters… Continue Reading

The Juice Runs Out for Yankee Parody Trademarks

Posted in Dilution, Fair Use, Famous Marks, First Amendment, Trademarks, TTAB

A good general business practice is to apply to register trademarks early. You’ll find out if there is an issue. You’ll have time to change rather than having to take everything off the shelf under the threat of a lawsuit. Yet a recent decision from the Trademark Trial and Appeal Board in New York Yankees Partnership… Continue Reading

Imported from “Dertroit”

Posted in Advertising, Branding, Dilution, Fair Use, Famous Marks, Fashion, Infringement, Marketing, Social Media, Social Networking

Readers of the blog know the dangers of selling unlicensed apparel and the oft-litigious stance of Major League Baseball when it comes to defending its marks.  But a recent viral t-shirt phenomenon may just be one time the MLB should call off the dogs — or the “BEISBOLCATS,” as it were. The story begins with Dee’s Barber Shop,… Continue Reading

Really, Seriously? Frat boys, Go Home to Mommy (Patagonia Sues To Shut Down ‘Fratagonia’ Line)

Posted in Branding, Dilution, Famous Marks, Fashion, Guest Bloggers, Infringement, Law Suits, Mixed Bag of Nuts, Trademarks

—Aaron Keller, Managing Principal, Capsule Unfortunately, the phrase “frat boy” or “fraternity” has been dealt another cultural blow by some less-than-impressive gents launching a ‘Fratagonia’ line of clothing. My hope is they are freshmen and just haven’t taken a semester of business law yet. But, likely there are other senior “should know better” individuals involved…. 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

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