DuetsBlog Collaborations in Creativity & the Law

Category Archives: Infringement

Subscribe to Infringement RSS Feed

Counterclaims for Cancellation Are Like Yoga Pants for Your Infringement Defense

Posted in Advertising, Fair Use, Fashion, Infringement, Law Suits, Loss of Rights, Trademarks, USPTO

Here’s one piece of advice you’ll hear from just about any trademark attorney: apply to federally register your marks as soon as financially possible. It is a very important step to take in order to protect your brand. A federal registration provides nationwide rights over any third-party that begins use of a confusingly similar mark… Continue Reading

¿Por Que, JUANITO FÚTBOL?

Posted in Advertising, Branding, Fair Use, Famous Marks, Fashion, Infringement, Social Media, Trademarks, TTAB, USPTO

In the fall of 2012, an upstart freshman quarterback at Texas A&M named Johnny Manziel earned the moniker “Johnny Football” during an incredible season, leading the Aggies to a number of huge wins. Yet after three years, a Heisman Trophy, and a shaky rookie season in the NFL, Manziel has yet to secure a trademark registration for… 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

A Naked Attempt at Trademark Association

Posted in Branding, Guest Bloggers, Infringement, Mixed Bag of Nuts, Squirrelly Thoughts, Trademarks, TTAB, USPTO

- John Reinan, a Minneapolis journalist and recovering marketer When news broke a couple months ago that the “gentlemen’s club” Spearmint Rhino would be opening a downtown Minneapolis branch on Hennepin Avenue, I joked on Twitter that I should open a club down the street and call it Menthol Hippo. OK, so I’m not really… 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

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

Trademark vs. Copyright: Avoid the HAVOC

Posted in Advertising, Articles, Branding, Copyrights, Famous Marks, Idea Protection, Infringement, Television, Trademarks

I’ve come across yet another college-hoops related trademark dispute — but what’s even more interesting is the way the AP covered the story. It’s a reminder that we IP lawyers can and must dispel any public confusion between the different forms of intellectual property. Shaka Smart, the longtime basketball head coach at Virginia Commonwealth University,… Continue Reading

Likelihood of Preclusion: Fallout From the Supreme Court Ruling on Likely Confusion

Posted in Articles, Infringement, Law Suits, Trademarks, TTAB

Move over likelihood of confusion, there is another sheriff in town, at least when it comes to looking for guidance on best practices and strategic considerations for a brand owner’s clearance, registration, protection and enforcement of trademark rights in the United States. As if us dedicated trademark types didn’t already have enough likelihoods (confusion, dilution,… Continue Reading

Remember the Alamo® but Don’t Forget the License.

Posted in Articles, Branding, Fair Use, Famous Marks, Infringement, Law Suits, Trademarks

With hard pressed economic times, state and local governments have turned to new sources of revenue: intellectual property licensing. The City of New York has been in the game for decades, licensing use of its the I ♥ NY symbol. San Francisco enforces its rights in the image of its BART transit pass. And Portland is… 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

Trolling for an Inventive Method for Patent Enforcement

Posted in Genericide, Idea Protection, Infringement, Law Suits, Loss of Rights, Patents, SoapBox, Squirrelly Thoughts, Technology, USPTO

In the wake of Jon Stewart and Stephen Colbert leaving their respective shows on Comedy Central for newer pastures, John Oliver has emerged as a new beacon of political humor and satire.  If you haven’t watched his show, and especially if you considered the former two as having an obvious political slant, you should check… Continue Reading

Coke Walks Tightrope in ZERO Branding

Posted in Articles, Branding, Food, Genericide, Infringement, Law Suits, Loss of Rights, Marketing, Trademarks, TTAB, USPTO

As you may recall, last September we wrote about Coca-Cola’s Significant Interest in Zero Marks, discussing Coca-Cola’s defense of a trademark infringement suit brought by an individual named Mirza Baig, who claimed rights in “Naturally Zero” for Canadian natural spring water, and Coca-Cola’s contrasting attempts to own and federally-register various marks containing the term ZERO… Continue Reading

First dinosaurs, then wooly mammoths. Are trademark attorneys next to go extinct?

Posted in Genericide, Infringement, Law Suits, Look-For Ads, Squirrelly Thoughts, Trademarks

A world without trademark attorneys… frightening, isn’t it? (maybe more for me than for someone who isn’t a trademark attorney). It seems unlikely, but we may be inching closer to this apocalyptic scenario. In Australia, a group of researchers, legal academics, and other organizations are collaborating on the creation of a computer program that they… 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

Copycat Characters and the Selective Enforcement of IP Rights

Posted in Copyrights, Infringement, Law Suits, Mixed Bag of Nuts, Trademark Bullying, Trademarks

Spring is here with summer just around the corner. While many are preparing for barbeques and boating, others are finalizing plans and perhaps costumes in preparation for Comic-Con (Comic Book Convention) season. As many know, DC Comics and Marvel Comics are the long-time competitors in comic book publishing. Both companies were started in the 1930s… Continue Reading

The Pursuit of Trademark Perfection: Can “40-0″ Function as a Mark?

Posted in Advertising, Branding, Domain Names, Fashion, Infringement, Marketing, Social Media, Trademarks

As Kentucky prepares to square off with Wisconsin in the NCAA Final Four and move one step closer to an undefeated, 40-win season, the University of Kentucky has been dueling with one of its own – a fan and attorney claiming he has already secured trademark rights to “40-0.” But can such a term even… Continue Reading

On Unintended Consequences: Will the B&B SCOTUS Ruling Encourage Trademark Bullies?

Posted in Almost Advice, Articles, Branding, Civil Procedure, Infringement, Law Suits, Trademark Bullying, Trademarks, TTAB, USPTO

Last week, while I was preparing for and had the unique opportunity of arguing a real, live TTAB final hearing on the merits, outside the TTAB’s typical oral hearing location (because it was selected by the TTAB to be part of the ABA’s IPLSpring continuing education conference in Bethesda, Maryland), the Supreme Court issued its… Continue Reading

The Big Dance Around Trademark Madness

Posted in Advertising, Famous Marks, Guest Bloggers, Infringement, Marketing, Sight, Social Media, Social Networking, Trademarks

- Draeke Weseman, Weseman Law Office, PLLC Last week, the Chicago Sun Times profiled Loeb & Loeb attorney Douglas Masters, the NCAA’s outside counsel in charge of trademark enforcement during March Madness. Licensing the official sponsorships is big business, and enforcement demands require Masters to send out hundreds of cease-and-desist letters to both accidental infringers… 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