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Category Archives: Dilution

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Distinguishing the Fictional From the Real: Names and Brands in Television and Movies

By on Posted in Agreements, Branding, Dilution, Fair Use, Famous Marks, First Amendment, Infringement, Law Suits, Marketing, Television, Trademarks

We have an interesting question to answer, leading us into the holiday weekend, during which I suspect a few movies will be watched by more than a few marketing types and trademark types: “Is it trademark infringement if a fictional company or product in a movie or television drama bears the same name or brand as a real… Continue Reading

My Namesake Sues To Protect Its Famous Mark

By on 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

McDonald’s Trade Dress? State Farm is There.

By on Posted in Advertising, Branding, Dilution, Famous Marks, Food, Infringement, Marketing, Non-Traditional Trademarks, Sight, Trademarks

Passing by a roadside billboard recently (below is a miniature version I found in the Minneapolis skyway system), my first thought was, wow, McDonald’s is getting into the juicy lucy business: Until more focus revealed that State Farm Insurance is the one behind the ad. Look familiar? No doubt burgers and car insurance are totally different lines of business and… Continue Reading

Nike and Adidas on the Same Team?

By on Posted in Branding, Dilution, Famous Marks, Marketing, Non-Traditional Trademarks, Trademarks

Knowing how Adidas (or should I say, adidas) jealously guards its three stripe design on shoes, and is notorious for protecting against not only three, but two and four stripe buffers as well, my eyes were drawn to this display of Nike Shox sport shoes at our local Finish Line retail store. While I suppose different… Continue Reading

I Like My Waffles With Syrup And A Little Splash of Pretentiousness

By on Posted in Dilution, Fair Use, Famous Marks

If you were a Louis Vuitton waffle, would you eat yourself?  (Admittedly, this opening line was shamelessly intended to provide an opportunity for including that hyperlink.) Apparently, this is now a possibility thanks to the efforts of Los Angeles based artist Andrew Lewicki.  For reasons that will likely always remain unknown to me (perhaps because of my modest Minnesota upbringing), Mr. Lewicki… Continue Reading

Red Solo Cup Inspiration?

By on Posted in Audio, Branding, Dilution, Goodwill, Marketing, Non-Traditional Trademarks, Trademarks

Marketing types, it may well be obvious to some, but it is always important to consider the source of inspiration for the branding and marketing of the products and services you promote. At least for those who follow country singer Toby Keith, with a Costco retail end-cap display like this, it’s hard not to assume where the… Continue Reading

Truncating an Underwear Brand: JK, JKY?

By on Posted in Advertising, Branding, Dilution, Famous Marks, Infringement, Marketing, Trademarks, Truncation, USPTO

As you know, we’ve spun a lot of fabric over the last few years on the topic of brand and trademark truncation. Marketers seem to love the informality, emotionality, and efficiency of truncated brand names. I suppose trademark types love them too, since they can have the tendency to spin off a variety of complicated legal issues — all… Continue Reading

Godin on Trademark Bullying?

By on Posted in Branding, Dilution, Fair Use, Famous Marks, Infringement, Trademark Bullying, Trademarks

Seth Godin is someone we follow closely here on DuetsBlog, and he has just weighed in on the “trademark bullying” topic. We haven’t always agreed with his trademark advice, especially his misapprehension of the benefits of federal registration. But, it’s hard to argue with this conclusion: “When a brand becomes a bully, it loses something… Continue Reading

Chick-fil-A’s Successful “Eat Mor Chikin” v. “Eat More Kale” USPTO Letter of Protest

By on Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Food, Infringement, Marketing, Trademark Bullying, Trademarks

As you will recall, we have followed pretty closely Chick-fil-A’s “Eat Mor Chikin” trademark claims against Vermonter Bo Muller-Moore and his “Eat More Kale” trademark: Eat More Anything? New York Times Covers “Eat More Kale” Trademark Dispute Chick-fil-A Goes Stealth in “Eat More Kale” Trademark Dispute? Chick-fil-A’s “Eat More” Stealth USPTO Trademark Enforcement Strategy Succeeds… Continue Reading

Chick-fil-A’s “Eat More” Stealth USPTO Trademark Enforcement Strategy Succeeds

By on Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Food, Infringement, Marketing, Trademarks, TTAB, USPTO

Eating more isn’t necessarily a bad thing. Yeah, I saw the documentary Super Size Me; admittedly, I haven’t viewed certain fast food the same way since, but it all depends on what it is you’re eating, right? Common sense dictates that if it’s good for us, we should eat more of it. Indeed, Lexi Petronis of Glamour writes… Continue Reading

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

By on 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

New York Times Covers “Eat More Kale” Trademark Dispute

By on Posted in Dilution, Food, Infringement, Trademark Bullying, Trademarks

Yesterday the New York Times ran a story on the “Eat Mor Chikin” v. “Eat More Kale” trademark dispute — the same one we covered a week ago: Eat More Anything? A couple of quotes from the NY Times article caught my eye: “In a statement, Chick-fil-A said, ‘We must legally protect and defend our ‘Eat mor… Continue Reading

Putting the Shoe on the Other Tootsie

By on Posted in Agreements, Branding, Dilution, Domain Names, Famous Marks, Food, Goodwill, Infringement, Law Suits, Marketing, Trademark Bullying, Trademarks

There was a time when a certain kind of small business owner – strapped for cash — with a meager promotional budget, easily could be tempted to adopt a “clever” name, as a “short-cut,” to “play off” a well-known, iconic brand, but in the end, he or she probably was convinced by counsel that doing so would be… Continue Reading

Bank Branding Revisited

By on Posted in Branding, Dilution, Trademarks

–Dan Kelly, Attorney A couple of years ago, I posted about the use of FIRST in bank names, and titled my post “First First!  A Diluted Banking Brand?”  Well, life imitates art: Now, in this company’s defense, its name is just First National Bank, and the above signage really just combines two marks.  An image of a… Continue Reading

A Legal Obligation to Enforce Trademark Rights?

By on Posted in Dilution, Fair Use, Famous Marks, Genericide, Infringement, Law Suits, Loss of Rights, Trademark Bullying, Trademarks

When trademark owners are accused of bullying and shamed in public, a common and knee-jerk defensive response to justify the cease and desist letter or enforcement action is: ”We have a legal duty and obligation to police and enforce our trademark rights.” And, some might even go on to say: ”If we don’t enforce our mark against this use,… Continue Reading

Reese for Sheriff?

By on Posted in Advertising, Branding, Dilution, Fair Use, First Amendment, Food, Guest Bloggers, Product Packaging, Trademarks

Hat tip to Dave Taylor who provided this photo for some discussion: Looks like a fellow named Mark Reese, currenting Acting Sheriff, is running for Sheriff in Lancaster Country, Pennsylvania, right in Hershey’s backyard. Do you suppose this Hershey’s trade dress may have inspired the Acting Sheriff’s campaign?  Your thoughts on whether Hershey’s has a claim?… Continue Reading

Some Trademarks Die Hard, Some Are Just Numb

By on Posted in Branding, Dilution, Famous Marks, Infringement, Law Suits, Marketing, Trademarks

Likelihood of confusion? Likelihood of dilution? Blurring? Tarnishment? All to the left?   To closely examine Sears’ most recent trademark infringement and dilution law suit and complaint concerning the DIEHARD brand against the maker of DieHard Spray ("a numbing agent for male genitalia"), check out Sears, Roebuck & Co. v. Rockhard Laboratories, Inc., venued in the Northern District… Continue Reading

Levi Pockets a Favorable Court of Appeals Decision

By on Posted in Dilution, Law Suits, Trademark Bullying

–Susan Perera, Attorney Dusting off the archives, you may remember a 2009 blog post by Tiffany about a trademark infringement lawsuit initiated by Levi Strauss against Abercrombie & Fitch over the back pocket design on the respective parties’ jeans. In that case the jury determined that the pocket designs, shown below, were not confusingly similar;… Continue Reading

Is iPad Famous, as a Trademark?

By on Posted in Advertising, Branding, Dilution, Famous Marks, Marketing, Trademarks

Look what the email spam filter snagged for the holidays: As you may recall, this isn’t the first time we’ve seen iPad brand bait email solicitations. Back when they first appeared, the ownership of the iPad name was unsettled, but since then, it appears Apple has secured federal registration of the iPad brand name and trademark, at least, for a… Continue Reading

Trademark Case to “Watch”: Rolex Sues Rollx Vans in Minnesota

By on Posted in Branding, Dilution, Domain Names, Famous Marks, Goodwill, Infringement, Law Suits, Marketing, Trademarks

          Another interesting trademark case was filed last Thursday in Minnesota federal district court, captioned Rolex Watch U.S.A., Inc. v. Associated Partnership Ltd., d/b/a Rollx Vans and d/b/a www.RollxVans.com. Here is a pdf of the Complaint and the attached Exhibit. The crowned plaintiff really needs no introduction. On the other hand, the defendant Rollx Vans is… Continue Reading

INTELligent Trademark Enforcement?

By on Posted in Dilution, Domain Names, Famous Marks, Infringement, Law Suits, Trademark Bullying, Trademarks

What is the difference between a semiconductor computer chip maker and an electrician? Not much, at least when both have the word “intel” in their business names, according to a Complaint (complete with Exhibits) filed last Thursday in Minnesota federal district court, by Intel Corporation a/k/a Chipzilla, against a pair of Elk River, Minnesota electricians doing business… Continue Reading