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Category Archives: Dilution

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Just Which “Wayne” Are We Talking About?

Posted in Articles, Copyrights, Dilution, False Advertising, Famous Marks, Idea Protection, Infringement, Law Suits, Sight, Social Media, Squirrelly Thoughts, Trademarks

Who comes to mind when I list the following character traits: lives in a dystopian metropolis, has a deceased parent, fights criminals, rides a motorcycle, has seemingly-superhero strength, is fearless, has dark hair, and–oh, by the way–his name is “Wayne.” More than that, you learn all these facts about Wayne by watching a trailer for… Continue Reading

SCOUTING Trademark Infringement: Girl Scouts v. Boy Scouts

Posted in Branding, Dilution, Infringement, Law Suits, Mixed Bag of Nuts, Trademarks

The Boy Scouts of America (BSA)’s decision last year to end its boys-only policy was met with mixed reactions.  Some lauded it as a progressive victory.  Others, including former Girl Scouts, viewed it as a thinly-veiled corporate strategy and a loss for girls.  As part of an early adopter program, more than 3,000 girls have… Continue Reading

Illegal Brand Clone, or Evolved Inspiration?

Posted in Articles, Branding, Dilution, Famous Marks, First Amendment, Infringement, Marketing, Trademarks, USPTO

A loyal reader brought to our attention the logo for a rather interesting chiropractic practice: Without too much pain, can we all agree on the likely inspiration for the above name and logo? What’s really interesting is that the name Thorassic Park has been federally-registered since 2004, so there is little doubt that the names… Continue Reading

Whistling While You Work to Parody a Brand?

Posted in Articles, Branding, Dilution, Famous Marks, First Amendment, Food, Marketing, Product Packaging, Trademarks

This is quite a collection of art pieces, inspired by some pretty recognizable candy bar brands: The fine print reads: “Each handmade . . . sculpture is a real working whistle!” Parodies, anyone? Here’s a question, does the functionality of these pieces make them any less expressive as art, any more likely to be confused, any more likely… Continue Reading

UGG Is Not Synonymous With A Type of Boot

Posted in AlphaWatch, Branding, Dilution, Famous Marks, Fashion, Genericide, Idea Protection, Infringement, International, Law Suits, Marketing, Patents, Trademarks

The popular UGG® branded sheepskin boots are at the heart of a dispute in the Northern District of Illinois. Deckers Outdoor Corp. (“Deckers”) owns 29 federal registrations for the trademark UGG in connection with numerous goods and services, including footwear, clothing, wallets, passport covers, plush toys and retail store services. The company also has four… Continue Reading

Wine Spectator v. Weed Spectator – Is Wine Related to Cannabis?

Posted in Dilution, Infringement, Mixed Bag of Nuts, Trademarks

M. Shanken Communications, publisher of Wine Spectator — a popular magazine, website and mobile application that offers wine ratings on a 100-point scale — has filed a lawsuit against California-based Modern Wellness, Inc., based on that company’s use of “Weed Spectator” for ratings of cannabis. The federal complaint, filed in New York, alleges claims including trademark infringement,… Continue Reading

Battle Over Trademark in NOLA

Posted in Articles, Civil Procedure, Dilution, Fair Use, Famous Marks, Food, Infringement, Law Suits, Marketing, Trademarks, USPTO

The trademark ST. ROCH MARKET is at the heart of a dispute in New Orleans (aka NOLA).  The City of New Orleans is battling in court with the current lessee of the building associated with the trademark. ROCH MARKET has been associated with a popular market in New Orleans since 1875. Prior to Hurricane Katrina,… Continue Reading

Brands, Who Could Hang a Name on You?

Posted in Articles, Branding, Dilution, Famous Marks, First Amendment, Food, Infringement, International, Marketing, Trademark Bullying, Trademarks

Over the years, we’ve written much about trademark bullying. When the mantle fits, and when it doesn’t. When a brand has a realistic view of its rights, and when the claimed scope is bloated. We’ve never before written about “Ruby Tuesday,” neither the Rolling Stones’ song nor the struggling restaurant chain, until now — and… Continue Reading

Is Dr. Pepper Pulling (Hawaiian) Punches in Enforcement Efforts?

Posted in Branding, Dilution, Famous Marks, Food, Infringement, Trademarks

On a recent shopping trip, I couldn’t help but notice some interesting brand extensions inside and outside the stores. My encounter inside involved Burt’s Bees . The brand encompasses a wide variety of lip balms, lotions, cosmetics, and personal body care items. (pets, too). Yet I discovered a new addition to the lineup: Burt’s Bees… Continue Reading

Buc-ee’s Fights ‘Tooth and Nail’ For Total Texas Takedown

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Infringement, Law Suits, Sight, Trademarks

Recently, we have been covering updates from a trademark infringement, dilution, and unfair competition action between Buc-ee’s and Choke Canyon, two rival Texas convenience stores with endless rows of gas pumps and checkout lanes (everything’s bigger in Texas, you know; even gas stations). About a month ago, a Texas jury found that the Choke Canyon… Continue Reading

Dog Toy Manufacturers Really Like Parodies

Posted in Dilution, Famous Marks, Fashion, Food, Infringement, Law Suits, Mixed Bag of Nuts, Product Packaging, Trademarks

A dog toy display at a local pet store caught my attention recently. I did a double take on seeing the familiar fonts, coloring, and packaging.  Not long after, I happened to find these at a different pet store. Once again, the familiar labels, coloring, and bottle designs caught my attention. While certainly reminiscent of… Continue Reading

Buc-ee’s Beaver Chomps Reptilian Competitor

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, Infringement, Law Suits, Mixed Bag of Nuts, Sight, Trademarks

About a week ago, we reported on an interesting case out of the Southern District of Texas involving two competing convenience stores with cartoon animal mascots: Buc-ee’s (a beaver) and Choke Canyon (an alligator). As someone who has personally visited Buc-ee’s stores, I can tell you that they are quite the destination. Buc-ee’s tend to… Continue Reading

At INTA 2018: Trademarks and Free Speech

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, First Amendment, Infringement, Law Suits, Marketing, Trademarks, TTAB, USPTO

Yesterday in Seattle — where nearly 11,000, sleepless, brand protection, trademark, and IP professionals from 150 countries have registered and converged for INTA’s 140th Annual Meeting — yours truly had the distinct pleasure of sharing some thoughts on the intersection between federal trademark registration and Free Speech. Here are some before, during and after pics:… Continue Reading

Trader Joe’s Takes on Trademark “Schmo”

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, First Amendment, Food, Infringement, Law Suits, Mixed Bag of Nuts, Sound, Squirrelly Thoughts, Trademarks, TTAB, USPTO

In recent USPTO news, Trader Joe’s, the supermarket chain known for its eclectic and unique foodstuffs, recently filed an opposition to registration of the mark “Trader Schmo,” which is described as designating a wide variety of Kosher foods. Understandably, Trader Joe’s took issue with the mark, and particularly its use in the food category. The… Continue Reading

Uncertain Case of Google Trademark Fair Use

Posted in Advertising, Agreements, Articles, Branding, Contracts, Dilution, Fair Use, Famous Marks, Infringement, Marketing, Search Engines, Trademarks

Aren’t digital advertising billboards amazing? My iPhone captured this rolling series of images just yesterday, for a health care organization using the Google trademark in the Minneapolis skyway: My questions, permission, co-branding, no permission, but classic or nominative fair use? Is Google flattered? Free advertising? Do they care? Should they care? Discuss, to quote John Welch,… Continue Reading

Lawsuit Verdict Makes Grumpy Cat Smile

Posted in Contracts, Copyrights, Dilution, Infringement, Law Suits, Marketing, Mixed Bag of Nuts, Trademarks

For anyone unfamiliar with internet cat personalities, Grumpy Cat is a well-known feline whose dwarfism and underbite culminate in a perpetual—and adorable—sour expression.  Grumpy Cat’s real name is Tardar Sauce.  In 2012, when Tardar Sauce was only a few months old, she became an internet sensation after a photo of her endearing scowl was posted… Continue Reading

The Elvis Presley Estate Loses Bid to Block ELVIS JUICE Beer

Posted in Dilution, Famous Marks, Food, Infringement, International, Law Suits, Trademarks, TTAB, USPTO

Trademark disputes involving breweries are nothing new, with breweries battling each other, wineries, and even cities over trademarks. We can now add estates of dead celebrities to the mix, as the Estate of Elvis Presley continues its battle against UK-based BrewDog over its ELVIS JUICE I.P.A. The Elvis Estate first attempted to resolve the dispute… Continue Reading

Legitimate Super Bowl Ambush Marketing

Posted in Advertising, Articles, Branding, Dilution, Fair Use, False Advertising, First Amendment, Infringement, Marketing, Trademark Bullying, Trademarks

Not all ambush marketing is created equal. Some can cross the line and create a likelihood of confusion as to sponsorship. Some falsely advertises. But, some is totally fair use and lawful. This current promotional banner by La-Z-Boy is capitalizing on the excitement surrounding the upcoming Super Bowl weekend festivities, but without reasonable risk of… Continue Reading

Green Bay Packers Enforce “Titletown” Mark Against High School Football News Series

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, Infringement, Mixed Bag of Nuts, Sight, Trademarks, TTAB, USPTO

Tis’ the season for football, not just on the gridiron, but also at the U.S. Patent and Trademark Office. Shortly after the “Minneapolis Miracle,” as we reported this week, the Minnesota Vikings applied for registered marks on the phrase. And with the “big game” approaching, teams have titles on the mind–even those that aren’t in… Continue Reading

Court Protects Louis Vuitton from Inability to Understand Obvious Joke

Posted in Dilution, Fair Use, Famous Marks, Fashion, Infringement, Law Suits, Loss of Rights, Mixed Bag of Nuts, Sight, Trademarks

For the past several years, DuetsBlog has covered fashion house Louis Vuitton’s outlandish trademark “bullying” against law schools, dog toys, photographers, and movie studios. Most recently, we discussed the brand’s latest high-profile lawsuit against rival luxury canvas tote maker (sarcasm), My Other Bag, for trademark infringement and dilution. To the casual observer, one might not… Continue Reading

John Deere: These Colors Don’t Run

Posted in Branding, Dilution, Law Suits, Look-For Ads, Mixed Bag of Nuts, Non-Traditional Trademarks

Growing up with a farm in the family, I learned early on that Nothing Runs Like Deere®.  As people tend to do, we named all of the tractors –  after Masters of the Universe characters, of course.  There was a front-loader type tractor of a brand I don’t recall named Skelator, another old tractor named… Continue Reading

Will the Velveeta Brand Melt into Laughter?

Posted in Advertising, Articles, Branding, Dilution, False Advertising, Famous Marks, FDA Approval, Food, Loss of Rights, Marketing, Taste, Trademarks, TTAB

What do you think of when you hear the word Velveeta? Me too, childhood — complete with piping hot Campbell’s tomato soup — and perfectly melted grilled cheese sandwiches. Later in life, at least for me, came liquid gold and RO*TEL queso dip, usually on weekend game days. And, my daughter might add to the… Continue Reading

Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part III

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, First Amendment, Marketing, Trademarks, TTAB, USPTO

Of course, loyal readers have been eagerly awaiting Part III of the series (see Part I and Part II) focusing on Tam’s intersection of federal trademark registration and the First Amendment. In terms of the certain and practical implications flowing from the decision, it opens the door to a host of new trademark applications containing religious and… Continue Reading