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Category Archives: Infringement

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Poke Restaurant’s Trademark Enforcement Sparks Protests

Posted in Branding, Food, Infringement, Mixed Bag of Nuts, Social Media, Trademark Bullying

Trademark enforcement, particularly in an age of social media and internet shaming, is tricky business.  Some brands (I’m looking at you, Louis Vuitton) seem to have enough market share to ignore the social backlash from their heavy-handed demand letters.  But companies that lack that kind of brand power could benefit from a bit more finesse… 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

Billy Goats, Trademark Twins, and the Descriptive Limits of Language

Posted in Advertising, Articles, Branding, Food, Infringement, Law Suits, Mixed Bag of Nuts, Squirrelly Thoughts, Trademarks

I’ve been thinking about the nature of language lately, ever since I listened to a podcast about various philosophers who devoted their study to language. For example, Ludwig Wittgenstein, one of the most influential philosophers of the twentieth century, is famous for his work on the logic of language. A fundamental premise to his philosophy is that… Continue Reading

Update: MOMACHA Triples Down, Expanding Despite Infringement Claim

Posted in Almost Advice, Infringement, Trademarks

Earlier this year, the Museum of Modern Art in New York City, known as “MoMA,” sued a cafe and art gallery, MoMaCha, also located in New York City, asserting claims of trademark infringement, trademark dilution, and unfair competition. As discussed in my post a couple months ago, although MoMaCha has some well-founded arguments and defenses, the allegations… Continue Reading

Mohawk Tribe v. Mylan Highlights USPTO Constraints

Posted in Articles, Infringement, Patents, USPTO

Credit: Federal Circuit (what it looks like to argue there) One week ago, the Federal Circuit Court of Appeals issued its decision in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals, Inc., 18-1638 (Fed. Cir. July 20, 2018)–by all accounts, one of this decade’s most important decisions concerning the America Invents Act and the patent system. The… Continue Reading

Clash of the Cups: NHL Sues Over Stanley Cup Beer Mug

Posted in Famous Marks, Infringement, Law Suits, Non-Traditional Trademarks, Trademarks, TTAB

Even in July, with the heat of summer still blazing, you can’t get away from ice hockey in Minnesota. However, now that the Vegas Golden Knights have settled their dispute with the U.S. Army, it was starting to look like we were running out of hockey trademark news. Thankfully, the National Hockey League came through… Continue Reading

This is Not the Statue You’re Looking For: The Post Office’s $3.5 Million Copyright Mistake

Posted in Copyrights, Fair Use, Infringement, Law Suits

  Earlier this month, the United States Postal Service (USPS) was ordered to pay $3.5 million in damages to a sculptor for copyright infringement. Seeking a unique redesign for its “Forever” stamps, the USPS searched stock photos for images of the Statue of Liberty.  They found a particularly striking photo on Getty Images and paid… Continue Reading

Vacuum Wars: On-Product Comparative Ads?

Posted in Advertising, Articles, Branding, Fair Use, First Amendment, Infringement, Marketing, Technology, Trademarks

When can a brand owner lawfully use a competitor’s trademark on the brand owner’s product? Over the years, we’ve lifted away a lot of dust on the hairy subjects of classic trademark fair use, nominative fair use, and comparative advertising, especially in the context of billboard ads. It isn’t every day we see comparative billboard ads actually affixed to… 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

Laches Defense Applies to Cancellation Actions – Cosmetic Warriors v. Pinkette Clothing

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

In Cosmetic Warriors v. Pinkette Clothing, the U.S. Court of Appeals for the Ninth Circuit filed an opinion a couple weeks ago, reconfirming that the equitable defense of laches (unreasonable and prejudicial delay in bringing a lawsuit) applies in trademark cancellation actions, even though the U.S. Supreme Court has recently curtailed that defense in copyright and patent… 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

It’s Not a Wonderful Trademark Examination

Posted in Articles, Branding, Food, Infringement, Marketing, Trademarks, USPTO

It’s a wonderful life, collaborating with brand owners and marketing teams to advance their goals. Our work for brand owners also involves a collaboration of sorts with the U.S. Trademark Office. We work with the USPTO to obtain registrations for our clients and this triggers USPTO obligations. As such, when examining applications, the USPTO must search its records for… Continue Reading

Can a YouTube Video Invalidate a Patent? It’s Certainly Possible

Posted in Articles, Audio, Infringement, Law Suits, Patents, Search Engines, Squirrelly Thoughts, Technology, Television, USPTO

One of the most common defenses to patent infringement is that the asserted patent is invalid. The reasons for invalidity regularly range from lack of utility, to incorrect inventorship, and even to fraud (as I’ve recently written about). Often, the defendant asserts that the patent is invalid for lack of novelty or non-obviousness–pointing to some… 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

“Square Donuts” – Generic for Cafe Services?

Posted in Branding, Infringement, Law Suits, Loss of Rights, Mixed Bag of Nuts, Trademarks, USPTO

Two businesses in Indiana are squaring off in a trademark lawsuit over the right to use the term Square Donuts for…well, square-shaped donuts. Back in 2005, Square Donuts, a cafe with four locations in Indiana, sent a letter to Family Express (a convenience store chain with 70 locations in Indiana), demanding that Family Express cease… 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

What Will Happen To The New Prince Songs

Posted in Audio, Copyrights, Famous Marks, Idea Protection, Infringement, Law Suits

There is a battle brewing over songs by Minnesota’s own Prince.  I, for one, am anxious for the dispute to be resolved so we can enjoy these recordings. Who knows, there may be another worldwide hit “Purple Rain” out there. The initial lawsuit was brought by Prince’s company Paisley Park Enterprises, which is now owned… 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