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Tag Archives: Scope of Rights

Another Real Lulu: Anatomy of an Affidavit

Posted in Articles, Branding, Food, Goodwill, Infringement, Law Suits, Marketing, Trademarks

On Tuesday of this week, we discussed the trademark infringement case filed by Lulu’s Market & Deli against Lulu’s Public House (depicted above), here is a link to a pdf of the Complaint. As you will recall, we expressed a healthy dose of skepticism about the claims being asserted by Lulu’s Market & Deli, and we predicted… Continue Reading

A Real Lulu of a Trademark Infringement Case

Posted in Articles, Branding, Food, Law Suits, Trademarks, USPTO

It’s that time of year again, the Minnesota State Fair is here, and trademark issues abound, again. We’re actually not covering the trademark fair issue we planned to cover today because we just caught wind of a lulu of a trademark infringement case filed on Friday of last week against a brand new 2014 fair vendor: Lulu’s Public House. This particular… Continue Reading

Description of a Trademark with the USPTO

Posted in Articles, Branding, Non-Traditional Trademarks, Sight, Trademarks, USPTO

Continuing our discussion — from yesterday and the day before – about the description of a mark provided to the USPTO during the registration process, the below images from two unrelated federally-registered, non-verbal logos for banking services, help tell another related story:                       As the links… 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

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

Louboutin Wins Second Circuit Appeal, Sort Of . . . .

Posted in Branding, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Sight, Trademarks, USPTO

At long last, here is a pdf link to the decision, and here is the Second Circuit Court of Appeals summary in a nutshell: “We conclude that the District Court’s holding that a single color can never serve as a trademark in the fashion industry, Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778… Continue Reading

Trademark Hooliganism

Posted in Articles, Branding, Guest Bloggers, Infringement, Trademark Bullying, Trademarks

A day doesn’t go by without my GoogleAlert spotting another online reference to some purported example of “trademark bullying.” It seems like just about any private assertion of trademark infringement will trigger the use of the term as a very public knee-jerk response. As you know, we’ve spilled a lot of ink, writing about the topic… Continue Reading

Tree Hugging Evidence of Successful Trademark Enforcement?

Posted in Infringement, Law Suits, Loss of Rights, Squirrelly Thoughts, Trademark Bullying, Trademarks

It is not every day that tree rings are trending on Bing. This image got me thinking about how it might be an even better image to illustrate how effective trademark enforcement can impact the scope of trademark rights. As you may recall, I have illustrated this concept before using the perfectly regular concentric circles… Continue Reading

Beware the Paralyzing “Whac-A-Mole” Trademark Mentality

Posted in Branding, Domain Names, Infringement, Marketing, Trademarks

Trademark enforcement against infringing domains on the Internet is frequently likened to playing Whac-A-Mole. Just as soon as you eliminate one, up pops another, and another, etc. Dan’s post from last week on the most recent land rush on the Internet – with the creation of almost infinite Internet real estate — may be a warning that this comparison… Continue Reading

Brand Extensions That Significantly Expand Trademark Strength, Scope, and Risk

Posted in Articles, Branding, Marketing, Trademarks

As we have written before, any brand extension requires the necessary due diligence to mitigate the risk of a serious trademark conflict. And, from a trademark perspective, both strength and scope of rights necessarily expand as the number of different goods and services sold under the brand grows. If recent marketing research on brand extensions is followed… Continue Reading

Minnesota’s Legislative Answer to “Trademark Bullying”?

Posted in Infringement, Law Suits, Trademark Bullying, Trademarks

Minnesota State Representative Joyce Peppin, is convinced that “trademark bullying” is a problem and that it requires a brand new law in Minnesota to properly deal with it. Representative Peppin apparently is a law student at William Mitchell College of Law, and she has teamed up with other students and William Mitchell law faculty to write and… Continue Reading

Louboutin Red-Sole & Surrounding Contrast: An Implied Trademark Limitation

Posted in Articles, Branding, Fair Use, Infringement, International, Law Suits, Marketing, Mixed Bag of Nuts, Non-Traditional Trademarks, Sight, Trademarks

The Louboutin lacquered red sole trademark is the subject of great debate in the trademark world, fashion industry, popular news media, and among law school academics and friends of the court. I’m just not seeing it. I really don’t see a viable trademark claim here for Louboutin. Not for the reasons found by the district court — I… Continue Reading

Brilliant Trademark Advice or Baloney?

Posted in Almost Advice, Genericide, Marketing, Trademark Bullying, Trademarks

A few bits of trademark advice recently passed across my screen from The Marketing Blog: Turning Entrepreneurs Into Marketers – advice that I believe deserves some friendly comment and critique, leaving you to decide whether any of it rises to the level of brilliant trademark advice or sinks to the level of trademark baloney: “Trademark as you go. Don’t wait… Continue Reading

Baird on Branding & Trademarks

Posted in Advertising, Almost Advice, Branding, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Product Configurations, Sight, Smell, Sound, Taste, Touch, Trademarks

There aren’t too many things I enjoy more than speaking about the legal implications of branding. Our friends at BlackCoffee captured a talk I gave to a group of marketing types a while back, on black and white film (thank goodness), and they have graciously posted a 34 minute excerpt, here. Some of the topics I… Continue Reading

Taking Branding Cues from Q in the Single-Letter Trademark Queue

Posted in Advertising, Branding, Food, Marketing, Trademarks, Truncation

Welcome to another edition of AlphaWatch (the next one in our queue), where we explore the reach of single-letter trademarks, this time focusing on the letter Q and the single-letter branding cues it might suggest to consumers: Are you able to name the un-truncated version of this single-letter mark and brand? My daughter could. The answer is… Continue Reading

Permission to Exploit Jennifer Aniston’s Right of Publicity?

Posted in Advertising, Agreements, Contracts, Marketing

It is probably safe to assume that Channel 45 obtained permission to use Jennifer Aniston’s likeness and exploit her right of publicity in promoting viewership of syndicated Friends television programs. That’s a deal where everyone appears to win, Channel 45, viewers, advertisers, Aniston, and the other Friends cast members who share in the syndication royalties along with Ms. Aniston…. Continue Reading

Battle of the Nerds? Best Buy’s Geek Squad¬Æ on Trademark Patrol

Posted in Advertising, Branding, Domain Names, Infringement, Law Suits, Marketing, Trademarks

    Best Buy, owner of the Geek Squad brand since 2002, has filed a federal trademark infringement complaint in Minnesota against a pair of individual defendants apparently located in Missouri and California, for allegedly registering and using <thegeekpatrol.biz> domain and the names "Geek Patrol," "Geek Squad," and "Geek Squad Patrol". Here is a copy of the Complaint, including Exhibit A (Trademark registrations), Exhibit… Continue Reading