Just in time for Halloween, the Hershey Company has settled its trademark infringement lawsuit against a marijuana edibles company that sold candy closely resembling several of Hershey’s iconic brands.
A couple of weeks ago we wrote about recent European administrative and court cases that ended in bad news for U.S. trademark owners (Perfect Your Foreign Trademark Rights Early or Risk Losing Them Forever). Proving that bad things can happen in threes, UK Judge Colin Birss ruled last week that Victoria’s Secret’s “Pink” brand of lingerie infringes the trademark of Thomas Pink Ltd., a high-end clothier whose flagship store is located in London.
This week, luxury jeweler Fabergé filed a lawsuit against Brooklyn restaurant Faberge for what it has deemed a "shameless" appropriation of the jeweler’s famous mark and distinctive storefronts.
The original Fabergé was founded in 1842 in St. Petersburg, Russia, and has been most famous historically for designing elaborate jewel-encrusted Fabergé eggs for Russian Tsars and a range of other jewelry and luxury products sold internationally, including in New York. The restaurant/lounge opened last fall in Sheepshead Bay, Brooklyn, New York, and offers a menu of steak, seafood and cocktails.
The complaint, filed in the U.S. District Court for the Eastern District of New York, asserts that Faberge’s restaurant exhibits "an effort to free-ride on the enormous good will" established by the jeweler and simply "confuse[s] consumers and members of the general public."
The restaurant has responded that its name differs from the jeweler’s in that there is no accent on the final 'E' of the name, and the 'A' is shaped like the Eiffel Tower, thus distinguishing the restaurant’s mark from the jeweler’s. Even if the two marks are very similar, or even arguably the same, as we’ve previously discussed here on Trending Trademarks, trademark rights are typically limited to particular classes of goods or services; consequently, companies operating different types of businesses may often use the same trademark simultaneously. The owner of the restaurant rightfully pointed out that the two companies are in completely different and non-competing industries; fine jewelry versus food services.
These, however, may be distinctions without a difference. Owners of marks as famous as Fabergé have broader rights to use and defend their marks, including the right to prevent use of a confusingly similar mark if it is likely to generate confusion among consumers. It is also worth noting the restaurant’s façade, patterned in purple and gold diamonds (depicted above), which bears a striking similarity to the jeweler’s retail boutiques in London and Kiev. Finally, the complaint asserts that the restaurant’s menu “directly and obviously” alludes to the historical legacy of Fabergé (though specific items were not explicitly named). Considered as a whole, these facts could be sufficient evidence to support the restaurant owners’ bad faith and wilful misuse in adopting the name, look and feel of their establishment.
The case is Faberge Ltd. et al. v. Yusufov et al., case number 1:14-cv-03519, in the U.S. District Court for the Eastern District of New York.
Designer Tory Burch, whose signature TT gold monogram graces the shoes and handbags of well-dressed women everywhere, filed an infringement lawsuit in New York on Friday against Bluebell Accessories, Inc. Burch claims the New York wholesaler sold counterfeit products displaying Burch's monogram via BluebellWholesale.com. According to several media reports, Burch first investigated Bluebell back in November 2012, hiring an investigator to buy knock-off jewelry and sending a cease and desist letter to Bluebell owners Jessica Min and Sung Ki Min. Bluebell apparently withheld details of its business, including sale documentation and supplier lists, and Burch is now suing for an undisclosed amount, claiming trademark counterfeiting, false designation of origin and false descriptions, trademark and copyright infringement, trademark dilution, unfair competition, and injury to business reputation.
This isn’t the first time Burch has gone after counterfeiters for trademark infringement and counterfeiting. In 2011, Burch won $164 million in a suit filed in the U.S. District Court for the Southern District of New York against cybersquatters selling fake Tory Burch merchandise. The offending domain names included DiscountToryBurch.com, CheapToryBurchs.com, and Tory-Burch.us.
That amount was said to be the largest damages award granted to a fashion company in a counterfeiting action. The court didn’t stop there. The cybersquatters’ domain names were shut down and transferred to Burch, who was also granted the right to shut down any other websites the defendants create in the future without having file a subsequent lawsuit. Defendants were ordered to turn over the funds in their PayPal accounts to Burch as partial payment of damages. The court also enjoined Internet Service Providers, domain name registrars and third party selling platforms from providing services to any defendant for use in connection with infringement of Burch’s rights.
A powerhouse in the fashion world, Burch started her designer career creating tunics in her kitchen in 2004. In 2006, the Burch brand exploded with the launch of her most recognizable product, the $195 “Reva” ballet flats. Burch skyrocketed even higher in 2010 when Oprah added the Reva flats to her list of Favorite Things. In January 2013, Forbes magazine estimated Burch’s net worth at $1.0 billion dollars.
Tiffany and Company, a wholly owned subsidiary of Tiffany & Co. (NYSE: TIF) recently filed a lawsuit against Costco Wholesale Corporation to prevent Costco from selling counterfeit diamond engagement rings under the Tiffany brand and trademark. The complaint was filed in the U.S. District Court for the Southern District of New York and alleges trademark infringement, dilution, counterfeiting, unfair competition, injury to business reputation, false and deceptive business practices and false advertising.
In the world of college sports, there is perhaps no hand gesture more famous than the University of Texas’s “Hook ‘em Horns.” For those unfamiliar, the gesture consists of a hand gesture with the palm facing forward, the index and pinky extended, and the middle and ring fingers held down by the thumb. That exact gesture is also known, in heavy metal music circles around the world, under many names, including “Metal Horns.” Metals Horns appears to have been first used at concerts as early as the early-mid 1970’s, and became popularized by the late Ronny James Dio starting in 1979, when Mr. Dio joined as the front man for Black Sabbath.
On October 31, 2012, Google and Rosetta Stone entered into a confidential settlement agreement resolving Rosetta Stone’s claims that Google’s use of Rosetta Stone’s trademark name as a keyword in Google’s AdWord program violated Rosetta Stone’s trademark rights. The Google AdWord program has been under legal scrutiny for some time, and Google’s decision to settle rather than fight suggests that Google is sufficiently nervous about the outcome not to risk a trial. As a result, the AdWord program, which remains controversial in the trademark community and subject to legal attack, gets a reprieve for now.
For those unfamiliar with the AdWords program, Google allows persons or entities to pay to have its ads appear when a user of the Google search engine types in a “keyword.” In the case of Rosetta Stone, competitors purchased the trademarked name ROSETTA STONE as a keyword, so that their ads for competing products would appear either next to or above the search results when Google users typed in that phrase. The essential problems from the trademark owner’s point of view is that (1) Google is making money based on unauthorized use of their trademarks, and (2) competitors are using owner’s trademarks to compete against the owner’s products and services. Based on publicly available information, it appears that Google takes the view that AdWords are not trademark uses of the owners’ marks, do not cause consumer confusion, and therefore are not prohibited by federal trademark law.
An Algonquin, IL dog daycare center currently known as Starbarks is contemplating a name change after Starbucks Coffee Co. sent a “cease and desist” letter alleging that the kennel’s name and logo were too similar to its own.
Warner Bros. Takes Ginger Rogers for a Spin in Defense against Louis Vuitton and Wins
When a creative work bears a company’s trademark without consent, there is often a clash between the trademark owner’s right to prevent such use and the third party’s First Amendment right to freedom of expression. One notable battle ended in June in New York federal court, where French fashion house Louis Vuitton lost its trademark infringement lawsuit against Warner Bros. studio.
Louis Vuitton sued over the appearance of a counterfeit Louis Vuitton bag in Warner Bros.’ 2011 comedy film The Hangover Part II. Vuitton’s claims included trademark dilution, false designation of origin and unfair competition.
Is Google Generic?
Two Arizona men have filed a lawsuit seeking cancellation of Google Inc.’s trademarks claiming the word “google” means “to search on the Internet.” The complainants, David Elliott and Chris Gillespie, are also asking for a jury trial. The complaint was filed after Google won a ruling that required Gillespie to assign nearly 800 website domain names such as “googledonaldtrump.com" and “googlestarbucks.com.” Gillespie said he needed the domain names to start a business based on “commerce…charity, and more.” However, according to Google, Gillespie used some, if not all, of the domain names to promote a "family of soon-to-be-launched gay interest websites, none of which have any association with Google or the other brands, individuals, or products that are included in [the] domain names.”