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Category Archives: Dilution

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The Big Ten and the NCAA Tip Off for MARCH Marks

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

You don’t have to be a sports fan to be aware of MARCH MADNESS, the name associated with the annual tournament to determine the college basketball national champion. The tournament is organized by the National Collegiate Athletics Association. The name MARCH MADNESS is derived from the fact that the tournament occurs almost exclusively in March…. Continue Reading

McCarthy Institute Trademark Seminar 2017

Posted in Advertising, Articles, Branding, Copyrights, Dilution, Famous Marks, First Amendment, Marketing, Trademarks, TTAB, USPTO

One of the current challenges in trademark law addressed in Seattle last week at the Amazon Corporate Conference Center, host of the 2017 McCarthy Institute and Microsoft Corporation Symposium, is an issue we have discussed quite a bit here, namely Trademark Disparagement and the First Amendment. The panel to discuss this weighty topic included the… Continue Reading

Wawa Not Gaga Over Dawa?

Posted in Almost Advice, Branding, Contracts, Dilution, Fair Use, Famous Marks, Food, Genericide, Idea Protection, Infringement, Law Suits, Look-For Ads, Marketing, Technology, Television, Trademark Bullying, Trademarks

Earlier this month, Wawa, an East Coast convenience store chain, demonstrated it is not gaga over a single location food mart (copy of complaint linked here), called Dawa: As Dawa has vowed to defend its name, will this case come down to a battle over the meanings of the marks? Do consumers really know and… Continue Reading

ORAL B Wireless Floss?

Posted in Advertising, Dilution, False Advertising, Famous Marks

I recently purchased a post-holiday present (for myself) – Apple’s AirPods, wireless headphones designed to integrate with Apple’s various products, including the iPhone 7 (which, helpfully, discarded the headphone jack in the name of “courage.” The earbuds themselves are quite tiny, and likely quite easy to lose, so they come in a case with a… Continue Reading

Second Circuit Agrees: Louis Vuitton Can’t Take a Joke

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

If you’re still looking for holiday gift for that special someone, the Second Circuit has your back. Fresh off the docket, the Second Circuit gave its blessing to My Other Bag’s line of parody canvas tote bags. For additional background, you can read our discussion of the District Court’s grant of summary judgment to the… Continue Reading

Donald Trump is on to Something

Posted in Advertising, Almost Advice, Branding, Copyrights, Dilution, Infringement, Law Suits, Marketing, Social Media, Trademarks

Some credit Donald Trump’s win to his savvy social media presence, including tweeting.  He reached millions of voters and caught the nation’s attention with his tweets.  The courts are now recognizing this phenomenon. In a recent trademark dispute between a DJ and a rapper over the trademark “LOGIC,” the Sixth Circuit recently criticized a district… Continue Reading

Sonic v. Supersonic Coffee v. AKA Coffee: Bullied to a better brand?

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

A specialty coffee roastery in San Francisco, Supersonic Coffee, has decided to rebrand to the name AKA Coffee, as reported yesterday.  The impetus for the rebrand was an opposition at the Trademark Trial and Appeal Board (TTAB) by the national fast-food chain Sonic, against Supersonic Coffee’s trademark application for the word mark SUPERSONIC.  This trademark application (Serial No. 86382164)… Continue Reading

A Handy List of Star Wars References that Might Get You Sued

Posted in Almost Advice, Dilution, Fair Use, Famous Marks, Infringement, Trademarks

With its purchase of Lucasfilms and the Star Wars franchise, Disney did not wait long to begin exploiting the works. Episode VII: The Force Awakens was released on Dec. 18, 2015 and grossed more than $2 billion at the box office. At the risk of stating the obvious, that’s a lot of money. More is… Continue Reading

Nihilist Arby’s: We Have The Tweets

Posted in Advertising, Branding, Dilution, Fair Use, Famous Marks, Marketing, Social Media, Trademark Bullying, Trademarks

I recently came across this new piece of merchandise available for sale online: Look familiar? Those familiar with the restaurant chain Arby’s likely think so. The shirt is a product of the parody Twitter account @nihilist_arbys, created by a former writer for The Daily Show. With occasional references to current events, Nihilist Arby’s darkly comedic tweets… Continue Reading

Timber! Will the Little Trees Car Freshener Configuration Trademark be Chopped Down?

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, First Amendment, Genericide, Infringement, Law Suits, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Trademark Bullying, Trademarks

We wrote about the above trademark warning ad a few years back, and the claimed trademark owner likely recognizing vulnerability as to validity: “The idea generally is, let’s show and create a record that we are educating the public about our trademark rights and hopefully deterring misuses that otherwise might find their way into the public… Continue Reading

The RedBox Mark Has Gone to Waste and 3 Quick Lessons to Learn

Posted in Dilution, Famous Marks, Infringement, Loss of Rights, Trademarks

The RedBox brand continues to dominate the movie rental market. For the uninitiated, RedBox is a brand of movie and video game rental vending machines placed in convenient locations like grocery stores, gas stations, and fast food lobbies, like the one below: However RedBox’s commercial success hasn’t stopped the brand from going to waste –… Continue Reading

Can Starbucks Tolerate Cannabis Parody?

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Fashion, FDA Approval, First Amendment, Food, Infringement, Law Suits, Marketing, Trademarks

A couple of weeks back, I captured this image from a t-shirt for sale in Starbucks’ backyard — at a shop in the Pike Place Market area of Seattle: One of the things it brought to mind for me is the dozen year long trademark dilution case that Starbucks lost, over and over, a few… Continue Reading

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