Trending Trademarks

Update on Varsity Brands et al v. Star Athletica

Posted by Lawrence Robins on November 2, 2016 at 3:07 PM

Back in September 2015, we wrote about Varsity Brands et al. v. Star Athletica after the Sixth Circuit ruled that the decorative chevron designs on cheerleading uniforms are eligible for copyright protection

The case has gone all the way to the Supreme Court, which heard oral arguments on October 31. Sullivan & Worcester Partner Larry Robins weighed in on the implications of the case in the recent Bloomberg BNA Patent, Trademark & Copyright Journal article below. 

Read Bloomberg BNA Article

Read about the Sixth Circuit Decision

 

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Topics: Sports, Supreme Court, Copyright, Litigation, Decisions, Fashion, Consumer Products

With Victory Over MTM, Amazon Can Still Use Brand Name Searches

Posted by Valerie Sussman on October 28, 2015 at 10:02 AM

When shopping for watches on Amazon.com, you might be surprised to find that a search for the luxury military-style watch “mtm special ops” brings you to a list of watches designed by competitors of Multi Time Machine, Inc. (MTM). According to the 9th Circuit Court of Appeals, this practice does not infringe on MTM’s trademark rights.

The 9th Circuit appellate panel reversed its own decision In Multi Time Machine, Inc. v. Amazon.com, Inc.; Amazon Services, LLC, published last Wednesday. In issuing summary judgment in favor of Amazon, the court held that no reasonable trier of fact could conclude that a likelihood of confusion existed based on the layout of Amazon’s search results page.

From the watchmaker’s perspective, Amazon’s search results created “initial interest confusion” that generated awareness of competitors’ products. Initial interest confusion may damage sales by taking advantage of a trademark’s good will and thus could create a cause of action for trademark infringement. MTM asserted that such confusion was even more likely because Amazon’s search results page did not include a message such as “no search results found” to suggest (accurately) that it does not sell MTM watches.

The court concluded that there was no likelihood of initial interest confusion because the non-MTM watches were “clearly labeled by Amazon” such that a “reasonably prudent customer accustomed to online shopping” would not be deceived. The court reasoned that the buyer could see clear images of the watches next to the boldly-lettered brand name (which Amazon opportunely included two times next to each product – for example, “Luminox Men’s 8401 Black Ops Watch by Luminox”). Even a couple of books appeared in the search results for “mtm special ops,” which as noted by the court, made it even less likely that a reasonably prudent online shopper would be confused.

Because the decision does not forbid online retailers from using proprietary product names as keyword terms, it seems likely that Amazon and other online marketplaces will continue to capitalize on brand name searches. Still, consumers seeking to purchase an authentic MTM watch should be advised that they will not find it on Amazon.

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Topics: Internet, Trademark, Litigation, Decisions, Consumer Products

Is that a “Tiffany?”: Consumers get little credit in recent court decision

Posted by Valerie Sussman on September 16, 2015 at 5:46 AM

After a court battle spanning more than two years, the US District Court for the Southern District of New York recently confirmed that to sell a ring of a style described as “Tiffany,” its maker must be Tiffany & Co. At issue was the word “Tiffany” posted in Costco’s display cases next to a series of diamond rings sold by the discount superstore. Was “Tiffany” a generic word for a six-pronged ring setting as Costco argued, or did it confuse consumers into thinking the rings were authentic Tiffany products?

A trademark becomes generic and loses legal protection when the meaning of the mark becomes associated with an entire market of products rather than the brand name. Famous genericized marks include Escalator and Thermos. In this case, despite Costco’s introduction of dictionary entries showing that “Tiffany” has become a generic descriptor of a ring setting, the court held that Costco presented inadequate evidence to show that any generic use of the word “Tiffany” undermined the strength of the Tiffany trademark. Therefore, the use of the word “Tiffany” in the display cases next to six-pronged rings infringed upon Tiffany’s rock-solid trademark rights.

In addition to trademark infringement, the court held that Costco violated the Lanham Act by selling “counterfeit” Tiffany jewelry. For a mark to be counterfeit, the Lanham Act requires that the mark is “spurious” and “identical with, or substantially indistinguishable form, a registered mark.” In addition, the use of the mark must be likely to confuse or deceive the consumer. Costco opined that the appearance and packaging of the rings were simply not confusing. The “Tiffany” trademark was not anywhere on the rings themselves, and the rings were not accompanied by false Tiffany paperwork. Plus, absent was Tiffany’s signature blue packaging and satiny white ribbon. (Coincidentally, that particular color of blue packaging is also trademarked by Tiffany, known for vigorously protecting its trademark rights).

Nevertheless, the court found that the word “Tiffany” on signs in Costco’s display cases exactly where the brand name would typically be located on other Costco products was enough to confuse consumers about the source of the rings. To justify this result, the court cited testimony from six consumers who were dismayed to learn that their rings were not made by Tiffany (including a particularly tearful consumer whose diamond fell out of her Costco ring). This evidence of likely confusion, combined with evidence of Costco’s lack of good faith in the form of damaging emails and photographs suggesting that Costco tried to copy some stylistic elements of Tiffany products, led to Tiffany’s victory on the counterfeiting claim.

The upshot is, if you are about to propose to that special someone, bear in mind that the only place you will be able to get your fiancé a “Tiffany” ring is at Tiffany & Co.

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Topics: Infringement, Trademark, Fashion, Consumer Products

Rah-Rah-©-Boom-Bah! Cheerleading Uniform Designs Win Copyright Protection

Posted by Natalie Lederman on September 3, 2015 at 11:49 AM

Though the U.S. Copyright Act does not currently offer protection for functional aspects of apparel designs, copyright protection does extend to purely decorative features of clothing that can exist independent of their functional aspects. This murky area of copyright law, known as the “Conceptual Separability Doctrine”, was the focus of a recent decision by the Sixth Circuit in Varsity Brands et al. v. Star Athletica. The court ruled that the decorative chevron designs on cheerleading uniforms are eligible for copyright protection.

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Topics: Sports, Copyright, Litigation, Decisions, Fashion, Consumer Products

A Post About Beer! - Kölsch to be Precise

Posted by Lawrence Robins on June 11, 2015 at 10:03 AM

Not long ago a colleague brought to my attention a “mea culpa” published on the Down The Road Beer Company website, www.downtheroadbrewery.com. Apparently the brewery ran into a bit of trouble with the Alcohol and Tobacco Tax and Trade Bureau, the federal agency tasked with, among other things, policing product labeling for products containing alcohol. In designing a label for its “Down The Road Rasenmäher Kölsch,” the brewery broke the rules by depicting the character “Hans Mowermann” operating a power lawn mower while holding up a large mug of, presumably, Down The Road Rasenmäher Kölsch. As we all (should) know, operating machinery while under the influence of alcohol ist verboten!

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Topics: Trademark, Registrations, Consumer Products

Strong Like Bull(y): Is Red Bull Overreaching, Or Just Trying To Protect Its Mark?

Posted by Natalie Lederman on February 11, 2015 at 5:35 AM

Recently, the maker of Red Bull energy drinks filed a notice of opposition against Old Ox Brewery’s trademark registration application, arguing that registration should be denied due to likelihood of confusion. The opposition reasons that oxen and bulls “both fall within the same class of ‘bovine’ animals and are virtually indistinguishable to most consumers.

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Topics: Infringement, Trademark, Food & Beverage, Registrations, Consumer Products

#Registered - U.S.

Posted by Natalie Lederman on February 2, 2015 at 9:00 AM

As a follow-up to our January post, “#Hashingitout: Is It Worth Registering A Hashtag?” I was interviewed by LexisNexis about the registration of hashtags. The interview was published in an article, “#Registered - U.S.,” in Lexis PSL IP & IT.

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Topics: technology, Infringement, Internet, Trademark, Food & Beverage, Registrations, Multimedia, Consumer Products

#Hashingitout: Is It Worth Registering A Hashtag?

Posted by Natalie Lederman on January 9, 2015 at 6:33 AM

Recently, the Coca-Cola Company sought to register two hashtags as trademarks: #cokecanpics and #smilewithacoke. For those who may wonder why: various online social networking services (like Twitter, Instagram, and Pinterest, to name a few) enable users to search a word or phrase preceded by a hash or pound sign (#) to identify postings on a specific topic. Hashtags are used to promote brands, campaigns, ideas or events, and trending topics can be identified by frequency of use in their respective online communities.

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Topics: technology, Internet, Trademark, Multimedia, Consumer Products

Is it or isn’t it? An app to discern whether your bag’s the real thing.

Posted by Natalie Lederman on December 4, 2014 at 7:02 AM

Recently, Japanese IT company NEC Corp. announced that it is developing an app with image recognition technology that allows its users to determine, in real time, whether or not that long sought-after Hermès Birkin bag is a knock-off or not. Once a target of aggressive piracy itself, NEC created the app in response to the increasing importance of managing the mass production and distribution of products internationally.

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Topics: technology, Infringement, Trademark, Fashion, Consumer Products

Video Interview with LXBN TV: Discussing Amazon's Trademark Infringement Lawsuit

Posted by Michael Palmisciano on May 8, 2014 at 5:50 AM

Following the post, "Amazon’s Red Hot Video Streaming Service Under Fire," I had the opportunity to speak with Colin O’Keefe of LXBN regarding the trademark infringement lawsuit.

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Topics: technology, Infringement, Internet, Litigation, Consumer Products

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Trending Trademarks provides comments and analysis on trademark issues affecting the fashion, high-tech, multimedia and consumer products industries.

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