Trademark Law

A Test of Your Generic (Trademark) Sensibility

Posted on September 05, 2008
The TTABlog® today offers up a list of Trademark Trial and Appeal Board ("TTAB") decisions addressing genericness as a test to trademark practitioners and the public on the TTAB?s seemingly schizophrenic approach to addressing genericness refusals. You may be surprised what the TTAB has found to be generic and what it has found to be merely descriptive (in which case such mark could be registered on the Principal Register upon a showing of acquired distinctiveness)...

Trademark Dispute over the ?Plaza? in Las Vegas Headed to Trial in Nevada State Court

Posted on September 04, 2008
I must admit that I had missed this local story about an interesting and ongoing Nevada state court trademark battle pitting two billionaires against each other over the hotel name ?Plaza.?Reporter Brian Miller has an article appearing today on GlobeSt...

NY Times Spotlights Growing Importance of Trademarks

Posted on September 03, 2008
The New York Times ran on article yesterday (link here) on the growing importance of trademarks as an intellectual property asset in an e-commerce world. (HT: Marty Schwimmer?s Trademark Blog).As the article notes, patents have often been the ?stars? of the IP world ? with trademarks relegated to the status of stepchild (Ed...

The Las Vegas Trademark Attorney Blog Turns One Year Old!

Posted on September 03, 2008
It was one year ago that I started my own little foray into "blawging" -- opting to focus exclusively on my favorite intellectual property, trademarks.While it might be nice to take some time and reflect on the past year, I'm too busy trying to find the next trademark story about which to write...

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Las Vegas? ?Heavy Hitter? Glen Lerner Files Declaratory Judgment Action Against Owner of ?Heavy Hitter? service mark

Posted on August 29, 2008
Most cities probably have at least one personal injury lawyer who is recognized by the public simply from the attorney?s extensive TV advertisements promoting the lawyer?s legal services. In Las Vegas, that attorney is Glen Lerner. Lerner, who established his practice in Nevada in 1991, is well recognized for his somewhat cheesy low-budget TV commercials advertising his personal injury legal services which have been gracing the Las Vegas airways for many years and have made him a mini-celebrity here (I suspect that he keeps his ads intentionally cheesy at this point because while he can certainly afford more polished ads, the cheesiness of his commercials have become another one of his signatures)...

The guessing game for the new Oklahoma City NBA franchise begins at the USPTO

Posted on August 27, 2008
There are several reports out today (here and here) that the name of the Oklahoma City?s new NBA franchise will be announced next week. The NBA team formerly known as the Seattle SuperSonics will have a new name, colors, and logo.The first clues of the proposed name for the new team came from several intent-to-use trademark applications filed by The Professional Basketball Club, LLC on July 25, 2008 for each of the names being considered (one application for various services related to basketball exhibitions and the second for clothing):OKLAHOMA CITY THUNDER (Tornadoes would have been more appropriate -- those familiar with Oklahoma City know what I?m talking about)OKLAHOMA CITY ENERGY (sounds like the local power company)OKLAHOMA CITY WIND (sort of a reference to Tornadoes)OKLAHOMA CITY BARONS (oil barons?)OKLAHOMA CITY BISON (when you think of basketball, do you think of buffaloes?) OKLAHOMA CITY MARSHALLS (hmmm...

Privé Nightclub Files Libel Lawsuit Against Vegas Blogger Under the Guise of Trademark Infringement

Posted on August 25, 2008
On August 20, 2008, Privé Vegas, LLC (?Privé?), Justin Levine, and Frank Tucker filed a defamation lawsuit against Michael Politz and various unnamed individuals and businesses in the U.S. District Court for the District of Nevada under the pretext of a trademark infringement/dilution-by-tarnishment lawsuit...

The Girls of Glitter Gulch go after Unauthorized ?Glitter Gulch? Website

Posted on August 20, 2008
On August 18, 2008, Granite Gaming Group II, LLC (?Granite?) filed a lawsuit against Primal Ventures, Inc., STRIPCLUBNETWORK.COM, Cybertech Internet Solutions and Paul J. Brown (collectively, the Defendants). See Granite Gaming Group II, LLC v. Primal Ventures, Inc...

Fifth Circuit finds Urgent Care to be generic for providers of urgent care medical services

Posted on August 19, 2008
The Fifth Circuit Court of Appeals reversed a lower court?s decision granting a preliminary injunction enjoining an urgent care medical provider from using the term ?Urgent Care.? See Urgent Care, Inc. et al v. South Mississippi Urgent Care, Inc. et al, 2008 U...

Sprinkles Cupcakes claims trademark infringement over its cupcake dot

Posted on August 16, 2008
The news outlets were abuzz today about the trademark infringement lawsuit filed by California cupcake maker Sprinkles Cupcakes against rival cupcake maker Famous Cupcakes (Reuters news report here).The lawsuit, filed on Thursday, claims that Famous has appropriated Sprinkles? signature ?nested circle design? trademark into its packaging, store décor, and website...

Britney Spears? stint at ?Rehab? Leads to Trademark Infringement Lawsuit against the Hard Rock Hotel

Posted on August 12, 2008
On August 8, 2008, Jimmy Daniel Alexander, a member of the rock band ?Rehab,? filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against the owners of the Hard Rock Hotel & Casino (?Hard Rock?) in Las Vegas...

KRED faces Opposition by Kellogg?s

Posted on August 08, 2008
On August 7, 2008, Kellogg North American Company (?Kellogg?) filed a Notice of Opposition against a company named Sunshine City, LLC (?Sunshine?), which hosts a website named Ghetto University (?GU?). See Kellogg North American Company v. Sunshine City, LLC, Opposition No...

Cartier Sues Donna Karen Over TANK Watches

Posted on August 07, 2008
A Cartier Tank American Ladies Watch Retail Price $32,900Several news outlets (here and here) reported on the trademark infringement lawsuit filed by Cartier against Donna Karen over the mark TANK for watches.The ?Tank? watch was created by Louis Cartier in 1917, who was supposedly inspired by the Renault tanks that Cartier saw during World War I...

H&R Block Sues American Express Over ?I got people?

Posted on August 05, 2008
H&R Block last week filed a trademark infringement lawsuit against American Express over its trademark ?I got people.? News stories here and here. H&R Block points to what it calls its ?My people? ad campaign where customers are depicted relying on H&R Block?s ?people? to handle not just their taxes but other routine personal assistant tasks...

Hobbit Travel Successfully Asserts Laches Defense Against Tolkien Enterprises?s Trademark Infringement Lawsuit

Posted on August 01, 2008
Saul Zaentz Company d/b/a Tolkien Enterprises (?Tolkien?), which owns the rights to use and license others to use marks and other intellectual property related to novelist J.R.R. Tolkien's books, including The Hobbit, was defeated in its attempt to stop a Minnesota-based travel agency, Wozniak Travel, Inc...

Las Vegas Mexican Restaurant Loses TTAB Opposition

Posted on July 30, 2008
The TTABlog® reported on a decision by the Trademark Trial and Appeal Board ("TTAB") upholding an opposition brought by the owners of Zabar?s, a gourmet epicurean emporium in the Upper West Side of New York City, against the owners of Zaba's Mexican Grill, a Las Vegas-based Mexican restaurant chain...

Facebook Shuts Down Scrabulous in U.S. and Canada After Notice of Lawsuit Against Game Makers

Posted on July 29, 2008
Well, it didn?t take long for Facebook, Inc., the popular online networking site, to give into the demands of Hasbro Inc., the owner of the rights to the famed Scrabble game in the United States and Canada. Reports today from Bloomberg News (link here) are that Facebook, Inc...

The Next Major Front Line for Trademark Infringement Battles: Children?s Birthday Parties

Posted on July 28, 2008
I'm a little late on this story which ran in the Wall Street Journal last week, but which the Baltimore Sun republished again today (link here) discussing the trademark infringement issues encountered by companies in the business of providing costumed characters for children?s birthday parties...

Intel Files Opposition Against INTELLEQUITY service mark application

Posted on July 24, 2008
A New Jersey company named Business Development Partners, LLC (?BDP?) is seeking to register the mark INTELLEQUITY for ?consulting services in the field of managing intellectual properties.?On July 23, 2008, however, Intel Corporation (?Intel?) filed a Notice of Opposition against BDP arguing that registration should be denied because the mark is likely to cause confusion with and/or dilution of Intel?s famous family of INTEL marks...

Victoria?s Secret Files Lawsuit Over Bizarre Nevada Trade Names

Posted on July 23, 2008
This falls into that category of trademark infringement lawsuits called ?What were they thinking??Last week, Victoria?s Secret filed a trademark infringement lawsuit against several named individuals and purported corporations in the U.S. District Court for the District of Nevada...

American Airlines and Google Reach Quiet Settlement in Google Adword Trademark Infringement Case

Posted on July 18, 2008
I've written before on lawsuits filed by such trademark owners as Rosetta Stone (link here) and Hearts on Fire (link here) against competiting companies that purchased their trademarks as a Google AdWords so that Sponsored Links would appear whenever an internet user would perform a search for those trademarks...

Rosetta Stone Files Trademark Infringement Lawsuit Against Rocket Languages Over Keyword Advertising ?Piggybacking?

Posted on July 16, 2008
On July 2, 2008, Rosetta Stone Ltd., the maker of the Rosetta Stone line of interactive computer software for learning foreign languages, filed a trademark infringement lawsuit in the U.S. District Court for the Central District of California against two New Zealand companies, Rocket Languages Ltd...

Tiffany & Co. loses its contributory trademark infringement lawsuit against eBay

Posted on July 14, 2008
The trademark news story du jour was the long awaited (and lengthy) decision in the Tiffany v. eBay trademark infringement lawsuit. See Tiffany (NJ) Inc. and Tiffany and Company v. eBay, Inc., Case, No. 04-cv-04607 (July 14, 2008). See news stories here and here...

Las Vegas Businessman ordered to stop using the name COHIBA on cigars and rum

Posted on July 12, 2008
The Associated Press reported today (link here) that Las Vegas businessman Philip Restifo, President of the Nevada corporation Cohiba Caribbean?s Finest Inc. and the Bahamas corporation Data Commodities Ltd., was ordered on June 30, 2008 by U.S. District Court Judge Brian Sandoval to stop using the mark COHIBA on cigars and rum and to pay General Cigar Co...

Tenth Circuit Applies Supreme Court?s MedImmune Precedent to Trademark Infringement Declaratory Judgment Actions

Posted on July 10, 2008
Both Likely to be Confused and Blawgletter® have succinct write-ups on the Tenth Circuit?s decision in Surefoot LC v. Sure Foot Corp., No. 06-4294 (10th Cir. July 8, 2008) addressing whether the standard for seeking declaratory judgments of non-infringement established by the U...

TTAB fires another fraud salvo into the trademark legal waters

Posted on July 09, 2008
The TTABlog® reports (link here) on another precedential decision by the Trademark Trial and Appeal Board that demonstrates again the ever increasing threat faced by trademark applicants and owners (not to mention the trademark attorneys representing them) of having their trademark applications opposed and trademark registrations cancelled due to fraud...

The American Trial Lawyers Association loses motion to dismiss lawsuit brought by the former Association of Trial Lawyers of America

Posted on July 07, 2008
The American Association for Justice (?AAJ?), formerly known as the Association of Trial Lawyers of America, won a first round battle in its trademark infringement lawsuit against The American Trial Lawyers Association, Inc. a/k/a THE ATLA (the ?Association?), and J...

IP Today article highlights splits of authority in sponsored link trademark infringement cases

Posted on July 02, 2008
Intellectual Property Today published an article entitled ?Multiple Splits of Authority Point Out the Need to Think Strategically in Sponsored Link and Other Internet Advertising Cases? which provides a nice summary of the confused state of court cases that have dealt with claims of trademark infringement by trademark owners against competitors who have purchased a trademark as a search engine keyword to trigger a ?sponsored link? advertisement.

Las Vegas Lighting Systems Company Sues Las Vegas Man and His Iowa Corporation Over ?4 WALL?

Posted on July 02, 2008
A lighting display designed by 4Wall Entertainmentfrom the 2008 Consumer Electronics Show On June 27, 2008, 4 Wall Enterprises, Inc., a Nevada corporation doing business as 4Wall Entertainment (?4 Wall Nevada?), filed a trademark infringement lawsuit in the U...

On remand, Johnson & Johnson wins injunction against Heartland Sweeteners in Splenda® trade dress infringement lawsuit

Posted on June 30, 2008
Rebecca Tushnet?s 43(B)log writes about the latest development in the ongoing trade dress dispute between McNeil Nutritionals, LLC (?McNeil?), the Johnson & Johnson division that makes Splenda® artificial sweetener (a brand of the artificial sweetener, sucralose), and Heartland Sweeteners LLC (?Heartland?), which produces and distributes store-brand sucralose in a similar looking yellow packaging for big-chain supermarkets...

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