Tag Archives: Trademark

Celebrity Chef Sued By Certification Organization Over “Gluten-Free” Labelling

Last month, gluten intolerance advocacy group Gluten Intolerance Group (“GIG”) sued celebrity chef Jamie Oliver for trademark infringement and unfair business practices under the Lanham Act and state consumer protection laws in the U.S. District Court for the Western District of Washington. According to the complaint, GIG is an independent organization that certifies food producers … Continue Reading

Arrgh! Social Media Post Lands “Pirate Joe’s” in Hot Water

In the highly-publicized case about unauthorized reselling of Trader Joe’s merchandise by renegade Canadian merchant “Pirate Joe’s,” social media provided the powder keg for Trader Joe’s arbitration enforcement demand. The case set sail in May 2013, when Trader Joe’s sued Pirate Joe’s proprietor Michael Hallatt for federal trademark infringement and violations of Washington state consumer … Continue Reading

Delta Airlines Uses RICO Statutes To Enforce Trademark Rights Against Counterfeit Pet Transit

Delta Airlines, Inc. (“Delta”) sued a handful of defendants in Federal court last week over a pet shipment website that appears to be affiliated with the company. Delta is seeking an injunction and damages against John Doe defendants. The complaint alleges federal trademark infringement and counterfeiting, wire fraud, unfair competition, tarnishment of a famous mark … Continue Reading

“Local” is a Claim Requiring Substantiation in False Advertising Action

U.S. District Court in Utah decided an interesting case involving whether an advertiser can use the word “local” in Bimbo Bakeries USA, Inc. v. Leland Sycamore et al.  Defendant Leland Sycamore had invented the trade secret process and formula for making “Grandma Sycamore’s Home-Maid Bread.”  After securing trademark registration for the bread packaging design, Leland … Continue Reading

Policing Your Registrations is No Joke, COMIC CON Trademark Dispute Shows

The San Diego Comic Convention (SDCC) and the proprietors of Utah’s “Salt Lake Comic Con” sparred recently in summary judgment arguments over the SDCC’s COMIC CON trademark. The SDCC owns four registrations for COMIC CON, and claims that Dan Farr Productions and other defendants infringed those trademarks by capitalizing upon the fame and goodwill of … Continue Reading

SCOTUS Strikes Down Ban on Disparaging Trademarks

Earlier this week, a unanimous but fractured Supreme Court ruled that a controversial provision in the Lanham Act prohibiting the registration of trademarks that disparage “persons, living or dead, institutions, beliefs, or national symbols” violates the First Amendment. This decision may be most remembered for the impact it may have on the NFL’s Washington Redskins, … Continue Reading

Crabby Outcome for Seafood Restaurant in Trademark Lawsuit Against Steakhouse

Phelan Holding, Inc. did not have its day in the sun when the Eleventh Circuit granted RARE Hospital Management, Inc.’s motion for summary judgment. Phelan and RARE are owners of casual dining restaurants, and the court found this was the only trait they had in common. Phelan’s Pinchers Crab Shack extensively used its tagline “YOU … Continue Reading

Louis Vuitton Loses Lawsuit Against Maker of Parody Tote Bags

Parody consumer-goods brands and fans of tongue-in-cheek humor have reason to be relieved after a federal court of appeals affirmed a grant of summary judgment against luxury handbag maker Louis Vuitton Malletier, S.A. (“Louis Vuitton”), dismissing its lawsuit against My Other Bag, Inc. (“MOB”), a seller of parody canvas tote bags. Louis Vuitton brought suit … Continue Reading

Former Member of The Commodores Sued For Using Band’s Name to Promote Solo Career

A Florida federal court enjoined Thomas McClary, an original member of famed Motown band the Commodores, from branding himself as “COMMODORES’ Founder Thomas McClary” in his booking advertisements for solo gigs. McClary left the band in 1984 to pursue a solo career. In 2014, Commodores Entertainment Corporation (“CEC”), the band’s legal entity, filed suit against McClary … Continue Reading

First New UDRP Decision Issued for gTLDs

In the first of what are likely to be many Uniform Domain-Name Dispute-Resolution Policy (UDRP) and Uniform Rapid Suspension (URS) cases related to the new gTLD program, CANYON.BIKE was transferred to Canyon Bicycles GmbH of Koblenz, Germany. This seems to have been a relatively easy decision for the arbitrator, since the Respondent's defense was "that he registered the disputed domain name to enlarge his network and 'get in (friendly) contact with Canyon.' The Respondent submits that a lot of people in the cycling industry did not know of the forthcoming new gTLDs and he therefore registered some domain names 'to protect companies' from domain squatting. The Respondent adds that before he was able to contact the Complainant it filed the present Complaint." The Respondent made this claim even though he was seeking money from the trademark owner for the domain name, and had advertisements at the domain name for the trademark owner's competitors.… Continue Reading

Michael Jordan Wins Appeal in Trademark and Publicity Case

Back in 2009, Time magazine, the publisher of Sports Illustrated, ran a special commemorative Sports Illustrated issue devoted entirely to Michael Jordan's basketball career. Jewel Food Stores, Inc. ("Jewel"), the operator of supermarkets in the Chicago area, was offered free advertising in the issue in exchange for agreeing to sell the magazine in its stores. Jewel ended up running a full page ad in the issue congratulating Jordan on his induction into the Hall of Fame. The ad featured text recognizing Jordan's accomplishments and a pair of "23" sneakers, and prominently featured the Jewel logo and slogan in the middle of the ad.… Continue Reading

A Prerequisite for Protection – ICANN’s “Trademark Clearinghouse”

Over the last few years, the Internet Corporation for Assigned Names and Numbers ("ICANN") has continued to press forward with its efforts to increase the number of generic top-level domains ("gTLDs"). Although ICANN believes this expansion will increase competition and choice in the domain name space, various groups, including advertisers, have lingering concerns that the expansion will further erode Internet security and force them to incur significant expenses to protect their brands. In an attempt to address these concerns, ICANN has implemented a limited number of protection mechanisms. However, these protection mechanisms are only available to those who register their mark(s) in the Trademark Clearinghouse, a global repository of trademark data that launched on March 26, 2013. Thus, in the midst of an expansion that is already riddled with uncertainties, brand owners are now faced with the difficult task of trying to assess the value of ICANN's unproven protections, and determining which marks, if any, are worth registering in the Trademark Clearinghouse.… Continue Reading

Protecting Your Trademarks in the World of .XXX Domain Names

To go along with .com, .net, and the other current top-level domains (“TLD’s”), the formation of a new .xxx TLD has been approved for websites related to the adult entertainment industry. Since the .xxx TLD is intended only for adult entertainment industry websites, applicants who want to set up .xxx domains will need to certify that … Continue Reading

Facebook and Lamebook Settle Trademark Dispute

On August 25, 2011, Facebook and Lamebook, a self-described “fun humor blog” which highlights funny, absurd and “lame” things people post on Facebook, settled their trademark dispute. The dispute began in early 2010 with Facebook sending Lamebook a cease-and-desist letter to change its name and stop using the Lamebook mark. After months of discussions between the parties, … Continue Reading

One in the Eye for Specsavers

Last week the Chancery Division dealt a blow to Specsavers when judgment was given in its trade mark infringement claim against Asda. Keen-eyed observers will also see that Specsavers were represented by the aptly named Adrian Speck. Asda ran an in-store advertising campaign for its optician’s services which featured a logo containing two ovals along … Continue Reading

AdWords – the latest clarification from the ECJ

Following the ruling of the European Court of Justice (ECJ) on Google’s Adwords policy in the Louis Vuitton case, which we wrote about in March, a new decision dealing with the problems associated with AdWords was handed down yesterday in the case Portakabin Ltd v Primakabin BV, Case C-558/08. Portakabin build and supply mobile buildings and own the … Continue Reading

@Promoted Tweets: Twitter Wades into the Ad Game

For the past few months, my colleagues and I have been giving speeches regarding the legal and practical challenges inherent in social media. One of those “practical” challenges is developing a strategy to monetize social media initiatives. While this is of importance to brands using social media services, it is certainly important to the services themselves. To highlight … Continue Reading

The Study That Never Was – A Lesson in Comparative Advertising

On Jan. 19, 2010, Weight Watchers International Inc. of New York sued its rival, Jenny Craig, Inc., in the U.S. District Court for the Southern District of New York. The suit alleged that the latter’s ads were misleading and deceptive, claiming they reference a comparison study carried out by Jenny Craig between the two companies’ … Continue Reading

Don’t Worry, Be Informed!

On Friday, October 23, 2009, from 12 – 1 p.m. (Eastern US Time), Joseph I. (“Joe”) Rosenbaum, Partner at Reed Smith and General Counsel of the IAB, assisted by Adam Snukal, Senior Associate at Reed Smith, will be presenting an educational webinar, sponsored by the Long Tail Alliance Program of the Interactive Advertising Bureau (IAB), … Continue Reading

Reed Smith’s Advertising, Technology, & Media Teleseminar: Facebook Personalized URLs – A Titanic Opportunity for Brands, or the Tip of an Iceberg?

Facebook announced last week the availability of a personalized Facebook URLs for individual profiles, e.g., www.facebook.com/[your name]. As discussed in our June 12 Client Alert, “Just When You Thought You Were Too Old for Facebook,” this latest offering from Facebook raises serious issues—issues that are typically encountered when technology collides with traditional intellectual property laws … Continue Reading

Just When You Thought You’re Too Old for Facebook

Earlier today, you may have received numerous memos from law firms and bloggers anxious to respond to the announcement by Facebook that Facebook is allowing trademark owners to notify Facebook of their IP rights through use of a special electronic form. The purpose is to allow trademark owners to record their IP rights in advance of … Continue Reading

Move Over Dot Coms – Get Ready to Dot Your Brand!

The Internet as we know it is changing dramatically. Instead of using domain names ending in “.com”—the most popular of the “top level domains” or “TLDs”—organizations located anywhere in the world may soon be able to purchase a TLD that corresponds to just about any word or phrase, including an organization’s name or brand. What … Continue Reading
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