— Karen Brennan, Attorney
Last month, Eddie Van Halen’s company, ELVH, Inc., filed a lawsuit against Nike for copyright infringement. The complaint alleges the above-depicted model of Nike’s Dunk Low shoes infringe his copyright in the red, white and black striped Frankenstein guitar design. The lawsuit is seeking not only profits from Nike’s sale of
–Dan Kelly, Attorney
I don’t recall what I was doing in January of 2007, but I apparently missed the news that Cisco had sued Apple over Apple’s then-newly announced iPhone product. I actually stumbled upon this accidentally when I recently searched for federal trademark registrations for IPHONE and found only one, and it belongs to Cisco. (PDF here.) Your eyes are not deceiving you: since 1999, IPHONE has been a federally registered trademark for use in connection with “computer hardware and software for providing integrated telephone communication with computerized global information networks,” and Cisco is the current owner of this registration. No joke. Look here.
This raises dozens of questions in my mind, of which I will present only a few.
Q1. Did Apple conduct a trademark search prior to rolling out the iPhone?
Q2. If so, what was the legal and business thought at Apple about Cisco’s IPHONE trademark registration?
Q3. What should a company like Cisco do when a junior user adops an identical trademark for use on identical goods, and the junior user’s product is wildly successful?
My suggested answers are after the jump.Continue Reading Lessons from the iPhone Trademark Spat
My business partner just finished building his deck. In addition to the bureaucratic ordeal, that is obtaining permitting, he decided to go the extra frustrating mile and install composite deck boards versus treated wood. Fair enough. There was just one little wrinkle: Normal deck screws will "mushroom" on you unless they are pre-drilled, or worse, split the board entirely. If you’re not careful, you can go through a few boards before you figure it out. And the boards are (not surprisingly) much more expensive.
To solve the problem, builders are instructed to use special screws.SplitStop™ screws seem to be the preferred choice – they have the patents (5,516,248, 5199,839, if you’re curious) – although others "claim" to work just as well. A simple Google search returns no less than 10 competing brands, all making a seemingly fair case that their screw is the right screw for the job. But none of them have the SplitStop patent, and numerous articles by independent reviewers bemoan the confusion in the marketplace.
In addition to the "patent" confusion, throw in a dose of "trademark" confusion, and you have a veritable IP mess. Titan Metal Werks (who owns the SplitStop name and patents) also markets the DeckEase™ product. Compare that to TrapEase™ (marketed by competitor FastenMaster).
And therein lies the question: What is Titan to do? Are the others infringing? Perhaps. Are they causing confusion in the market? Certainly. Is the confusion hurting the reputation of the Titan brands? Probably. Will Titan be able to get them to stop? Doubtful.Continue Reading The Case of the Screwed Screw Maker
If your business depends upon your name, you should obtain a trademark for your name and register it as a domain name. Andre Agassi must be glad he did so. A judge in the United States District of Nevada recently issued a preliminary injunction banning three web sites from using Andre Agassi’s trademarked name in
Airbrushing is a familiar technique among advertisers looking to avoid the risk of trademark infringement or dilution liability when branded props of others appear and would otherwise be recognizable. It can work well when removing a traditional visual trademark, i.e., a logo or word mark, because there can be no likelihood of confusion with (or dilution of) a visual mark when the claimed mark cannot be seen.
But what about when a branded prop dominates the ad or the identifiable trademark is another’s product container or package, a single color, trade dress, or perhaps the shape or configuration of the product or prop itself? What is critical for advertisers to appreciate is that when non-traditional trademarks are the subject of the ad and concern, the airbrush and any digital manipulation are less helpful and may be entirely ineffective in erasing trademark liability.
By way of a hypothetical example in the non-alcoholic beverage world, airbrushing the Coca-Cola word mark may not be sufficient to avoid liability, so long as the distinctive Coca-Cola bottle is left intact, say, in a Chevrolet ad. Likewise, by way of another hypothetical example, this time in the alcoholic beverage world, presumably the current owner of the Schlitz brand would object to another’s commercial use of its distinctive Schlitz label even if the Schlitz word mark was airbrushed or otherwise removed.
Now, for a not so hypothetical example concerning Schlitz’ ads, continue reading after the jump.Continue Reading Using Another’s Body to Sell Your Products? The Problem of Airbrushing Non-Traditional Trademarks
The overlap of virtual reality and intellectual property is a relatively recent phenomenon. The advent of virtual worlds, such as Second Life, has created increased opportunities for legitimate marketing and branding, as well as, increased opportunities for infringement. Second Life even has its own bar association for those interested in virtual legal practice.
There is no question that attempting to own “hot” or versions of “hot” appears to have great value and importance in the marketing world. So, how many original, unique, and memorable ways are there to communicate spicy “hot” anyway?
As to memorable, perhaps painfully memorable, Paris Hilton apparently sells designer clothes under her “That’s Hot” brand, and judging from her pending federal trademark filings, she still has an intention of expanding her “That’s Hot” brand to cell phones and alcoholic beverages, among other items, but apparently not buffalo chicken wing sauce or potato chips, thankfully.
Otherwise, it really might distract from a recent pair of trademark food fights in Minneapolis, both involving chips claiming to be “hot” too. You may recall the “Red Hot” Chip Fight between Barrel O’Fun and Old Vienna discussed here, that was quickly bagged here.
So, here are the current contenders in the most recent “Blazin’ Hot” trademark food fight:
Vs. 
A copy of the Buffalo Wild Wings trademark infringement complaint against P&G and Pringles is here.
The most interesting aspect of the complaint, from a trademark strategy perspective, is the fact that Buffalo Wild Wings did not bring a claim for infringement of a federally-registered trademark (Section 32 of the Lanham Act). Instead, it only relies on Section 43 of the Lanham Act (designed to protect unregistered trademarks) and a pair of Minnesota state law causes of action, even though it refers to owning some federal trademark and service mark registrations for and containing the term BLAZIN’. Perhaps Buffalo Wild Wings is attempting to insulate them from attack or challenge by P&G, since none is five years old yet or incontestable. Stay tuned to learn whether P&G turns up the heat on this dispute and counterclaims for cancellation anyway.
Now, as to the “original and unique” point raised above, it is worth asking, who else appears to have a stake in “Blazin” hot trademarks for food products? Uh, let’s just say, more than a few . . . .Continue Reading How Hot Will This Saucy Trademark Chip Fight Be? Blazin’ Hot? Now, That’s Hot!
Three guesses as to who just filed a federal trademark infringement action in Minnesota — one that also alleges “dilution” of a “famous” mark beginning with the word LIBERTY.Continue Reading Give Me Liberty, Or An Incredible Allegation of Fame and Trademark Dilution
As you may recall, three weeks ago, I posted about what appeared to be the makings of a “Red, Hot, Chip Fight” between Old Vienna and Barrel O’Fun Snack Foods, over Barrel O’Fun’s use of “Red Hot Ripple” and other elements of trade dress claimed by Old Vienna (see here for my prior post
What is it about some advertising campaigns that make them magnets for imitation?
For example, the Got Milk? imitators appear to be endless in numbers, but that is the subject of another post for another day.
For today, with respect to a different imitation magnet: There must be an endless number of creative and original ways to market a series of home and self defense videotapes, I suspect. Even relying on fear as an underlying theme to sell these videotapes, there must be only a few less than infinity still possible.
So, why the need to borrow from a famous ad campaign here — one I won’t mention until after the jump below?
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Continue Reading Terrifying? No, Just Another “Priceless” Imitation!