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Tag Archives: Likelihood of Confusion

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

“Glee” – Fox fails to see the funny side in the UK Courts

Posted in Guest Bloggers, International, Mixed Bag of Nuts, Television, Trademarks

Simon Bennett, partner and Rachel Cook, associate Fox Williams LLP Global entertainment giant Twentieth Century Fox Film Corporation recently lost its case against Comic Enterprises Limited, a UK company that runs several live entertainment venues in the UK, in what has been billed as a modern day David vs. Goliath. The subject of the dispute:… Continue Reading

Red Bull v. Victoria’s Secret

Posted in Advertising, Articles, Branding, Famous Marks, Marketing, Trademarks, TTAB, USPTO

When getting your wings might give you trouble from the one that gives you wings: Looks like Red Bull — owner of federally-registered rights in Gives You Wings — is considering a trademark opposition to prevent registration of Get Your Wings by Victoria’s Secret. Interesting and unlikely adversaries to say the least. Any predictions on whether… Continue Reading

A Horse-Drawn Trademark Collision Ahead?

Posted in Articles, Branding, Famous Marks, Marketing, Trademarks, USPTO

Little did I know that my temporary holiday-season addiction to the QuizUp Logos game would giddyup another blog post regarding non-verbal logo similarity. The pair of logos above identify, distinguish, and indicate the source of two famous luxury brands, can you name them correctly? Fashionista noted the similarity some time ago, here. Despite the clear… Continue Reading

Google’s Latest Trademark Bugaboo?

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Infringement, Marketing, Non-Traditional Trademarks, Search Engines, Sight, Trademarks, USPTO

Fame tends to attract attention, and imitation, especially unwanted imitation from, well, even pests. The Google trademark appears to have obtained such a high degree of fame that no third party can include the word “Google” in its mark without having a problem, regardless of what the third party happens to be selling. Ron, can you say, right in gross?… Continue Reading

When Intent Matters in Trademark Matters

Posted in Almost Advice, Articles, Counterfeits, Domain Names, Fair Use, Infringement, Law Suits, Trademark Bullying, Trademarks

One of the unfortunate aspects of trademark practice is the permission that exists in the law to challenge the motives and intentions of people. Unfortunate, because this permission is frequently abused, especially by less experienced trademark counsel, or perhaps when the strength of a case doesn’t seem like enough without injecting an unhealthy dose of emotion into… Continue Reading

Where Everybody Knows Your Name(s)

Posted in Almost Advice, Branding, Copyrights, Infringement, Marketing, Mixed Bag of Nuts, Social Media, Social Networking, Television, Trademarks

Who would you expect to find sitting at the end of the bar in this recently re-named Minneapolis sports bar, formerly known as Halek’s Bar? What if you were to queue a very familiar tune to these lyrics, would that help? Yeah, I was thinking of these guys too: But, what if these guys have nothing to do with… Continue Reading

The Trademark Bullying Dialogue Continues

Posted in Articles, Dilution, Famous Marks, Infringement, Law Suits, Loss of Rights, Trademark Bullying, Trademarks

Sophisticated trademark owners recognize that their trademark rights are dynamic — even if their trademarks aren’t famous for purposes of dilution – they can grow or shrink over time, depending on the magnitude of their own use and their response to third party violations. It is no wonder then that trademark owners are prepared to expend significant… Continue Reading

A Fluid Family of Trademarks?

Posted in Articles, Branding, Dilution, Famous Marks, Food, Infringement, Law Suits, Trademarks, TTAB

John Welch over at the TTABlog recently reported that oral argument will be heard by the TTAB later this month in McDonald’s opposition of McSweet LLC’s application to federally register McSweet for pickled vegetable products. It appears many resources have been invested on both sides of this battle for more than six years; it is unclear… Continue Reading

Trademark Clearance Opinions Webinar

Posted in Almost Advice, Dilution, Domain Names, Famous Marks, Infringement, Trademarks, TTAB, USPTO

Teaming up with Susan Upton Douglass of the Fross Zelnick firm is always fun, so don’t miss our upcoming webinar on September 11, 2013. It is entitled “Structuring Trademark Clearance Opinions: Assessing Search Results to Identify Infringements, Overcoming Clearance Challenges, and Preparing Opinions to Reduce Legal Risks,” and it is offered by Strafford Publications. We’ve… Continue Reading

Chick-fil-A to Land in Trademark Bully Court?

Posted in Advertising, Articles, Branding, Dilution, Food, Infringement, Law Suits, Marketing, Trademark Bullying, Trademarks, USPTO

As Chick-fil-A enters the Twin Cities market, it has begun another creative billboard campaign touting the “End of Burgerz — Koming Soon,” with no sign of the “Eat Mor Chikin” campaign, as of yet anyway. Bo Muller-Moore of Vermont — owner of the “Eat More Kale” trademark – probably would prefer that the billboards read: “The End… Continue Reading

Airing Your Kinky Trademark Laundry: Distinguishing Between Consent Agreements and Concurrent Use Agreements

Posted in Advertising, Agreements, Articles, Branding, Contracts, Marketing, Trademarks, USPTO

Last week I captured a few eye-popping photographs of a delivery truck parked in downtown Minneapolis promoting Kinky Liqueur, “a delightfully fruity fusion of super premium vodka“: And my hunch — that scratching the surface of this interesting brandname would reveal a worthwhile trademark story — actually paid off. As it turns out, Kinky Liqueur didn’t have a straight shot at federal… Continue Reading

Coca-Cola Open for Co-Branding?

Posted in Advertising, Branding, Fair Use, Food, Infringement, Marketing, Non-Traditional Trademarks, Product Configurations, Sight, Trademarks

By now you know how much I love the Coca-Cola brand and advertising, and this beautiful gem of a billboard is no exception: What I’m left wondering is whether consumers might view this as a co-branding campaign between Coca-Cola and Ford, and whether Coca-Cola felt the need to obtain permission from Ford to depict the back… Continue Reading

Happiness is a Federally-Registered Mark

Posted in Famous Marks, Food, Mixed Bag of Nuts, Trademarks, USPTO

It should be no surprise that the famous Coca-Cola brand name is federally-registered. One of the many significant benefits of federal registration is the USPTO’s obligation to refuse registration of third party marks that are likely to confuse — most importantly, without the prompting or involvement of the prior trademark registrant. No doubt Coca-Cola will… Continue Reading

The INTA “Trademark Bullying” Straitjacket

Posted in Advertising, Law Suits, Marketing, Trademark Bullying, Trademarks

This past week I’ve been pondering a question of great importance: When might a straitjacket double as a life vest? The answer actually arrived last Monday during INTA’s “The Ethics of Trademark Bullying” panel discussion at the 135th Annual Meeting in Dallas, Texas. In so many words, our good friend and wise guy Ron Coleman, over at… Continue Reading

Canine Inspired Copyright Confusion?

Posted in Agreements, Contracts, Copyrights, Infringement, Marketing, Social Networking, Trademarks

When we mention confusion on DuetsBlog, we’re typically referring to the well-known likelihood of confusion test of trademark infringement. But today, we’re focused on the apparent confusion many have about the important question of: When copyright protection comes into being. If you ever have wondered whether something is or has been “copyrighted,” this post is for… Continue Reading

McDonald’s Trade Dress? State Farm is There.

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?

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

Louboutin & Lessons Learned

Posted in Branding, Copyrights, Infringement, Keyword Ads, Law Suits, Marketing, Non-Traditional Trademarks, Search Engines, Sight, Trademarks, USPTO

As promised, here are some further thoughts, lessons learned, and remaining unanswered questions concerning the recent and long-anticipated decision of the Second Circuit Court of Appeals in Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc. Lessons Learned for Marketing Types: Single color trademarks may be owned, registered, and protected when they are distinctive and… Continue Reading

Successful Evolution of an Unlicensed Business Model?

Posted in Agreements, Articles, Branding, Contracts, Fair Use, First Amendment, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Trademarks, Truncation

Brand owners and managers may wonder, is a trademark license required when another’s unregistered color scheme is used? Depending on the facts, it may very well be. About four years ago brand owners scored a major victory in LSU v. Smack Apparel, when the Fifth Circuit Court of Appeals agreed to the existence and successful enforcement of… Continue Reading