San Diego Trademark Attorney® Blog

Good-for-you Snack Bars Face Off in Trademark Battle

February 27, 2014,

Granola-bar.jpgSan Diego - According to documents filed in the U.S. District Court for the Southern District of New York, the maker of KIND snacks is suing Clif Bar & Company for trade dress infringement over its soon-to-be released Mojo Bars. Kind LLC alleges that Clif unlawfully copied the design and packaging of its product line, making small changes over time to ultimately create a product that looks confusingly similar to KIND snacks.

In the filing, Kind points out how Clif's Mojo bar went from resembling the rest of the Clif Bar products to standing apart from them by appearing strikingly similar to Kind's bars. Specifically, Kind claims that "The new Mojo trade dress reflects a new and dramatic leap over the line in what appears to have been a calculated progression of incremental changes, designed each time to get closer and closer to the trade dress of Kind bars and farther and farther from the package design elements that would associate the product with the Clif brand."

Clif Bar & Company , which is headquartered in Northern California, is one of the country's leading energy bar and snack companies. Founded in 1992, the company's line of products is vast and includes bars specifically marketed toward women and children, in addition to its core CLIF varieties. In its years of operation, the company has been very successful, with its CEOs turning down a $120 million offer from Quaker Oats to buy the company in 2012.

Kind LLC, in contrast, is smaller and newer than Clif Bar & Company. The KIND brand was developed in 2004 and includes two main product lines, namely KIND Fruit & Nut and KIND PLUS. Its founder and CEO, Daniel Lubetzky, recently said of its trademark issues, "Clif is a long-standing and well-respected competitor in the nutritional bar marketplace, which makes this imminent release of a copy-cat product particularly disappointing." While making no formal comment as to the lawsuit, Clif showed no sign of backing down, stating," We're excited by the launch of our Clif Mojo Fruit and Nut and Clif Mojo Dark Chocolate flavors...Retailers and consumers are thrilled to have a fruit and nut and dark chocolate snack bar made with 70 percent organic ingredients."

Kanye West Hurls Trademark Lawsuit at Makers of "COINYE" Currency

January 23, 2014,

coins.jpgSan Diego - Kanye West has commenced a lawsuit against the creators of a playfully named brand of virtual currency. What started off as an internet fad, calling online digital currently "COINYE WEST," quickly turned into a legal dispute, with Kanye West's lawyers sending a cease and desist letter to the currency's makers, who have largely remained anonymous throughout the ordeal. When the cease and desist letter failed to curtail the coders, West and his legal team commenced a formal civil lawsuit in federal court in New York.

The rap artist, who gained fame originally for his hit album "College Dropout" and more recently for his romantic relationship with reality star Kim Kardashian, is not happy with the new virtual currency knocking off his name. Indeed, West's lawsuit provides several examples of what appear to be actual consumers, who through their tweets and social media posts, associate West with the currency, saying things like, "Kanye West now has a currency" and "Move over bitcoin, @kanyewest is about to create the greatest digital currency of all time."

With respect to the problem of anonymity on the part of the makers of COINYE, it seems that Kanye West may soon be provided relief as a judge for the court in which the lawsuit was filed recently granted him the legal authority to learn the identities of the COINYE coders. The threat of the coders' identifies being uncovered may apparently be enough to get West what he wants, as just this past week, one of the websites at issue displayed a notice that read, "COINYE IS DEAD. You win, Kanye." As far as what it will take for Kanye West to feel that he has in fact "won," his complaint seeks unspecified damages as well as a complete shutdown of all websites offering the COINYE currency to consumers.

Bitcoin is a completely electronic currency that can be bought, sold and exchanged entirely online, with the value being determined by simple supply and demand. In recent months, several big name online retailers have begun accepting bitcoin as payment, including Overstock.com and Zynga. In the case of COINYE, the physical appearance of the online currency features a gold coin with a picture of Kanye West's face connected to a fishtail and wearing his signature gold glasses and a necklace. In his complaint, West pointed out that this intentional association has unfairly "traded upon the goodwill and notoriety of Kanye West, one of the most famous entertainers and brand names in the world."

"Hanginout" Alleges Google's Use of "Hangouts" is a Trademark Infringement

December 11, 2013,

google.jpgSan Diego - A lawsuit filed in late November by San Diego based Hanginout, Inc. claims that Google, Inc. has infringed its trademark for its video-focused social media app. The smaller company located in Carlsbad claims that it was using "Hanginout" before Google began use of "Hangouts." The complaint demands that Google immediately stop use of "Hangouts" and that the court award lost profits and impose punitive damages.

Hanginout, Inc. filed its trademark application for "Hanginout" with the United States Patent and Trademark Office (USPTO) in July 2012, through the company's complaint claims that the brand has been around since 2009. The application covers, among other things, "Computer application software for mobile devices for sharing information, photos, audio and video content" as well as "providing online and telecommunication facilities for real-time and on-demand interaction between and among users of computers, mobile and handheld computers."

In contrast, Google's trademark application for "Hangouts" was filed in April of 2013 and through more expansive, covers essentially the same goods and services as the "Hanginout" Application. According to the lawsuit, which was filed with the U.S. District Court for the Southern District of California, Hanginout is a platform that enables users to build video profiles and send video chat messages to followers. The description of the Google Hangouts app on its website describes how the program allows users to "Turn any Hangout into a live video call with up to 10 friends."

Google's trademark application was suspended upon filing by the USPTO due to Hanginout's previously filed Application. The complaint claims that, "Google's 'Hangouts' trademark is nearly identical to Hanginout's 'Hanginout' trademark in both appearance and sound," and that "Google's infringement of Hanginout's trademarks was willful and with knowledge that ... use of the 'Hangout' trademark would or was likely to cause confusion and deceive others."

The complaint goes on to point out that, "Google has advertised Google's Hangouts to replicate Hanginout's products' capabilities." It also brings to light several examples of what Hanginout describes as intentionally confusing marketing materials. Google has yet to offer any response as to the lawsuit.

"Famous Jameis" Trademark Gets Swooped Up by Alabama Fan

November 12, 2013,

football.jpgSan Diego - A doctor from Birmingham, Alabama has filed a U.S. Trademark Application for "Famous Jameis", the same nickname that has been recently popularized as referring to Florida State Seminoles quarterback Jameis Winston. The application was filed with the United States Patent and Trademark Office ("USPTO") on October 24, 2013 in connection with "Athletic pants; Athletic shirts; Body shirts; Clothing for athletic use, namely, padded pants; Clothing for athletic use, namely, padded shirts; Golf shirts; Gym pants; Hats; Hooded sweat shirts; Shirts; Shirts and short-sleeved shirts; Sport shirts; Sports caps and hats; Sports pants; Sports shirts; Sweat pants; Sweat shirts; T-shirts; Tee shirts."

Dr. Mukul Mehra, who attended the University of Alabama School of Medicine in Birmingham, has no official ties to the standout Florida Seminoles Player, who grew up in a suburb of Birmingham. With respect to the filing, Mehra denied that he chose the trademark solely because of Jameis Winston, saying, "It's not necessarily geared toward him... I don't know what our intent completely is. We haven't worked all of that out." He has, however, already approached an Alabama sports marketing company about manufacturing t-shirts branded with the "Famous Jameis" trademark.

Whether the Examining Attorney at the USPTO will realize that the moniker has come to fame as a nickname for an actual person remains to be seen. Regardless, given the publicity the filing has garnered, it is likely that Mr. Winston himself has learned about the application and perhaps he will consider opposing the application or even buying it. Indeed, it seems that Mehra has already considered this as he was quoted as saying, "If it's something they're interested in using, we could potentially market it together."

This situation draws parallels to the contentious dispute that arose last year when a California businessman filed a trademark application for NBA player Jeremy Lin's "Linsanity" nickname. After months of legal back and forth, the USPTO finally awarded Lin the trademark. Both Lin and Winston shot to sports stardom in relatively short periods of time, gaining huge fan bases and large social media followings in a matter of months. With Winston's popularity only rising as the Seminoles push towards a potential BCS title and he continues to be brought up in Heisman talks, the trademark associated with his name only seems to be growing in value. The question remains, however, whether Winston or someone else will be the one to profit from it.

Starbucks' New Trademark Filing Reveals Plans for Fizzy Drinks

October 16, 2013,

soda.jpgSan Diego - A recently filed Trademark Application by Starbucks Corporation may evidence the coffee giant's intent to branch out into the market of carbonated beverages. The Application, which was filed on September 30, 2013, is for the name "STARBUCKS FIZZIO." It covers five classes, including milk based drinks, sparkling beverages and "machines for the production of beverages."

The filing gives an inside glimpse into what might possibly be Starbucks' next big move. Its recent introduction of carbonated drinks into select test markets furthers the theory that fizzy drinks are next up for the company best known for its fresh brewed coffee and caffeine-filled blended drinks. Still, Starbucks has been keeping mum as one spokesperson said that it has "not announced any plans about expanded availability" of the fizzy beverages outside of the current test markets of Atlanta and Austin.

Further speculation has led to thought that the Trademark Application's inclusion of beverage making machines might be a step towards Starbuck's production of a device that could compete with Sodastream. As the world's bestselling and most popular carbonated beverage machine, Sodastream seems to have almost complete control over the self-serve soda market with no established competitors. Starbucks may be looking to change this, especially given its already demonstrated interest and success with at-home beverage devices, such as the Starbucks Verismo. Despite this, a Starbucks rep was recently quoted as saying that the company does "not have plans for an at-home machine at this time."

Starbucks' push into the carbonated beverages arena would be another in a string of advances into markets outside of coffee. The company has made it a recent pattern to try out new products in select test markets, buy out smaller successful companies and then market the products nationwide in its more than 13,000 U.S. retail locations. Some of its more recent acquisitions include Evolution Fresh juices, La Boulange baked goods, and Teavana tea. Even further pushing the limits of development, Starbucks recently introduced "Starbucks Evening" locations in six U.S. cities, which feature beer, wine and snacks. Considering this rate of expansion into new areas, "Starbucks Fizzio," may very well be the next thing served up in white and green cups.

TTAB Squashes Hope for Subway's "Footlong" Trademark

September 12, 2013,

sandwich-footlong.jpgSan Diego - In a victory for the underdog, the Trademark Trial and Appeal Board (TTAB) this week sided with Sheetz of Delaware, Inc., the small convenience store chain that took on the nation's biggest fast food seller for its use of the word "footlong." Earlier in the year, Sheetz filed an opposition against Subway's federal trademark application for "footlong," arguing that the term is generic and has no secondary meaning.

In what turned out to be an all out war between the two companies, both submitted evidence of their own Teflon Surveys, each of which came to a different result as to the same question: Does the term "footlong" identify 12-inch sandwiches?" While the Board ultimately found the answer to be "yes," it noted that there were flaws in both of the surveys.

Making the problem worse for Subway, the TTAB found that even if "footlong" is not generic for sandwiches in the eyes of the general public, it is merely descriptive and lacking in acquired distinctiveness. Despite Subway pointing to the millions of dollars it has spent on marketing the term and its survey finding that 54% of people thought "footlong" referred to a brand name, the Board found that Subway had not used the term as a trademark, but rather to identify 12-inch sandwiches. Given this, it appears that as long as subway used "footlong" in relation to its subs, there is no amount of money it could have spent in ads to prove it had achieved secondary meaning among consumers.

Subway even lost out on its argument that "footlong" is distinctive as a Subway brand based on the numerous successful cease and desist letters the company has sent to other companies using the phrase. Rather than accepting this point, the Board instead found that all it evidenced was the other parties' reluctance to litigate with the enormous fast food chain. Highlighting this issue, the Board wrote, "The fact that applicant's business is much larger than some other establishments using "Footlong" in connection with 12-inch sandwiches does not establish applicant's right to exclusive use of the term." Further, it found that widespread use of the term "footlong" by competitors in itself went to show that the term lacked distinctiveness, marking the final blow for the fast-food sandwich giant.

Judge Sides with SeaWorld in Fight for Aquatica Trademark

July 15, 2013,

water-slide.jpgSan Diego - A judge in California Federal Court Tuesday refused the request by Spiraledge, Inc. to impose an injunction to bar SeaWorld Entertainment, Inc. from use of the trademark "Aquatica" for its water parks nationwide.

U.S. District Court Judge William Q. Hayes ruled that Spiraledge had failed to show that SeaWorld's use of the name "Aquatica" for its chain of water parks had damaged the reputation of its "Aquatica"-branded swimsuits. The judge noted that Spiraledge had waited 13 months to file a lawsuit against the water park operator and failed to provide evidence of loss of sales based on any confusion.

Spiraledge filed its application for "Aquatica" on an intent-to-use basis in February 2005 for use in relation to swimwear, and began sales of Aquatica-branded swimsuits in 2008. The trademark was registered in December 2011 with registration number 4,077,618.

Busch Entertainment Corporation, which was acquired by Seaworld in 2009, filed its trademark application for "Aquatica" for amusement parks seven months after Spiraledge in September 2005. The application has been stalled ever since based on Spiraledge's prior filing. The Examining Attorney for this trademark suspended the registration in April, citing the pending civil action as well as a likelihood of confusion between this trademark and the one held by Spiraledge.

Busch has successfully obtained registration for a separate trademark for "Aquatica" and "Aquatica SeaWorld's Waterpark," both for use in drinking vessels. However, applications for "Aquatica Seaworld's Waterpark" for use in amusement park services as well as clothing have also been suspended pending trial.

Since its acquisition of Busch in 2009, Seaworld has begun to operate the three water parks in Chula Vista, California, Orlando, Florida and San Antonio, Texas, all named Aquatica.

Spiraledge has argued that SeaWorld's use of the term "Aquatica" violates its trademark protection. It argues that the suspension of the "Aquatica" trademark held by SeaWorld demonstrates that the two trademarks are too similar and would lead to confusion among consumers.

This victory for SeaWorld could be short-lived. The case will proceed in federal court, and SeaWorld is free to continue use of the name "Aquatica" for its water parks until a verdict is reached. However, the possibility remains that the court could ultimately decide to force SeaWorld to cease use of the trademark "Aquatica."

Wendy's Battles "Frosty" Trademark Infringement

June 26, 2013,

ice_cream.jpgSan Diego - As summer heats up, so does the fight over ice cream by two major food producers. Fast food giant Wendy's International, Inc. has filed trademark infringement claims against United Dairy Farmers, Inc. for its use of the trademark Frosties on United Dairy Farmers' prepackaged soft-serve ice cream.

The Frosty trademark, the well-known Wendy's dessert, has been in continuous use since 1969 and is one of the hamburger-maker's best-selling items. While the term Frosty originally referred to the company's chocolate soft serve ice cream drink, the Frosty brand has expanded to include floats, sundaes and ice cream cones. Wendy's fast food locations number 5,800 nationwide, making it the country's third largest hamburger fast food chain.

Wendy's argues that United Dairy's infringement of its Frosty ice cream is particularly flagrant, as its design for the infringing ice cream product is packaged in a yellow and red color scheme. Wendy's own design of a yellow package with a red logo has trade dress protection, which Wendy's argues United Dairy is also infringing.

Wendy's claims that United Dairy has refused to comply with a cease-and-desist letter it sent demanding it immediately stop sales of its Frosties prepackaged ice cream. As a result, Wendy's filed a lawsuit in federal court in the Southern District of Ohio, where both companies are headquartered.

In the lawsuit, the fast food giant is asking for both compensatory and punitive damages. Wendy's argues that the Frosties product will lead to a likelihood of confusion among consumers and will damage the reputation of the Frosty brand.

United Dairy has been producing its Frosties ice cream since 2005 and has distributed the product in grocery stores across 14 states and at the 200 convenience stores operated by the company. Wendy's complaint alleges that United Dairy has been marketing its ice cream products under the trademarks Frosties and Frosty Malts. Sales of these products have been primarily concentrated in Ohio, Kentucky and Indiana. Wendy's alleges it recently learned about these products, which explains why it has taken nearly 8 years since the products' introduction to act on it.

Nike Fights FUEL Trademark Infringement Case By Claiming Abandonment

May 31, 2013,

nike.jpg.jpgSan Diego - Fuel Clothing Company Inc., founded in 1992 by skateboarding enthusiasts Shane Levi Gould and Buster Halterman, has been pursuing a trademark infringement lawsuit in South Carolina District Court against Nike since 2012. Fuel Clothing owns the FUEL trademark, U.S. Trademark Registration No. 2,290,931, for apparel.

Fuel Clothing has taken issue with Nike's use of "Nike+ FuelBand". In response to the complaint, Nike has produced evidence in the form of a survey which it claims shows that consumers are not likely to be confused between the trademarks. The Nike+ FuelBand is a bracelet worn to track the wearer's activities and measure movements.

Apart from issues with likelihood of confusion, Nike is also alleging that Fuel Clothing has been inconsistent with its use of the FUEL trademark and has failed to properly control the trademark to the point of abandonment.

Nike stated that Fuel Clothing's failure to police the trademark against infringers, and its failure to properly control the trademark in licensing agreements, has weakened the trademark to the point that it is entitled to only a narrow scope of protection, if any. Nike has cited Fuel Clothing's own licensing activities which it claims have weakened the trademark. Nike alleges that Fuel Clothing has issued naked licenses by failing to exercise any control over the licensed trademark. In one instance, Nike alleged that licensee Safari Shirt Co. was allowed to use "fuel" in any manner they saw fit, as long as it continued to pay royalties.

Nike also alleges that Fuel Clothing allowed uses of the FUEL trademark which caused confusion as to source among the public. Nike has cited a license agreement with Fuel TV which it claims caused confusion among the public as to source.

With regard to a failure to police, Nike pointed out that Fuel Clothing did not raise any objections to Nike's use of the "Fuel it Up" and "Fuel This" slogans on its t-shirts which were launched prior to the "Nike+FuelBand" trademark. Nike also cited Fuel Clothing's failure to pursue litigation against Fossil Inc., maker of handbags and watches, over the use of "Fossil Fuel". In Nike's recent motion to end the case, it also states that Fuel Clothing did not oppose registration of Nike's U.S. Trademark Applications for "NikeFuel" or "FuelBand."

No ruling on the motion has been entered yet.

Nike and Under Armour Battle Over "I Will" Trademark

May 7, 2013,

nike.jpg.jpgSan Diego - In February of this year Under Armour, Inc. filed a complaint against Nike, Inc. claiming that Nike was infringing on Under Armour's "I Will" trademark. In response, on Monday Nike filed a response which seeks a declaratory judgment that "I Will" does not function as a trademark, that Nike's use of the phrase is fair use, and otherwise that Nike's use will not cause any consumer confusion.

Under Armour is a sporting apparel company most well-known for its breathable t-shirts. It is claiming that its customers are being confused by Nike's use of the same "I Will" slogan. Under Armour also believes the trademark will become diluted should Nike be allowed to continue using "I Will" in its advertising.

According to Nike, it has been using the two-word sentence to promote its sporting gear since as early as 1995 which is a year before Under Armour even existed. Further, Nike believes the phrase does not serve as a trademark and is not known to the general public as being associated with Under Armour.

Under Armour Inc. was started by Kevin Plank, who played college football for the University of Maryland. The company began with an idea for an athletic undershirt that would keep the wearer warm in cold weather, and cool and dry in hot weather by coordinating with the body to "regulate temperature and enhance performance."

In the Baltimore federal court action, Under Armour is seeking a permanent injunction, compensation for profits arising from infringing use, and destruction of all uses of "I will" on products and advertising material. The complaint details the infringement by showing several phrases using "I Will" in various Nike advertisements. Although the Nike ads contain additional wording such as "I will do it for my team" and "I will finish what I started," Under Armour feels the two words "I Will" is the "cornerstone symbol" of its company.

Nike, which has been in the business of selling sporting gear since 1972, claims to have used not just "I will" but other similar short noun + verb sayings like "Just do it" all since before Under Armour existed.

Although the I WILL trademark U.S. Reg. No. 2409096 has been around for over 12 years, it was originally owned by Wells Investments, Inc. (formerly Wells Ingram, Inc.) who didn't take the necessary steps to prevent use by infringers, according to Nike. The lack of policing the trademark, according to Nike, has led to the loss of trademark rights.

The U.S. Patent & Trademark Office currently lists over 10 I WILL trademarks including an application filed by PepsiCo for beverages, and Reg. No. 3,336,747 for educational services owned by The Susan G. Komen Cancer Foundation, Inc.

Carpet Company Sued Over Use of "Wild Kingdom" Trademark

April 18, 2013,

leopard-print.jpgSan Diego - Couristan Inc., a carpeting and rug manufacturer based in New Jersey, was sued in Nebraska federal court last week by Mutual of Omaha Insurance Company. The lawsuit involves a recently released line of faux animal skin carpets under the "Wild Kingdom" moniker which Mutual of Omaha believes is likely to cause confusion with its TV series of the same name.

Mutual of Omaha is the owner of U.S. Trademark Registrations for WILD KINGDOM (stylized) for "Entertainment services-namely, a television program dealing with conservation of wildlife" and WILD KINGDOM for "DVDs featuring television show episodes." The program and the DVDs feature the well-known television program which originally aired between January 6, 1963 and 1986, but was picked up again more recently by Animal Planet in 2002. The popular show brought viewers into the natural habitats of wild animals, worked to protect animal rights, and advocated wildlife conservation.

Mutual of Omaha also owns U.S. trademark registrations for WILD KINGDOM for use in relation to t-shirts, stuffed animals, posters and other promotional items.

Mutual of Omaha believes Couristan is infringing on its trademarks and good name and does not want consumers to believe it is associated with Couristan's line of rugs. Consistent with its advocacy to promote wildlife conservation, Mutual of Omaha does not want to "... contribute to the trend of using actual or faux animal skins for purposes of home décor." It has requested that all carpets and rugs bearing the name "Wild Kingdom" be immediately destroyed.

When Mutual of Omaha learned of the line of rugs it sent a cease and desist letter to Couristan but the parties apparently were not able to come to a resolution. Mutual of Omaha believes its reputation will be harmed should Couristan continue to sell and distribute the "Wild Kingdom" line.

In the complaint, Mutual of Omaha accuses Couristan of unfair competition, trademark infringement, dilution of its trademark, and violation of the Nebraska Uniform Deceptive Trade Practices Act. Mutual of Omaha also requests damages due to the alleged infringement including damages for dilution, and recovery of any profits that Couristan has obtained from sales in the U.S. and abroad.

Disney Wins Dismissal in Feud Over TINKERBELL Trademark

April 2, 2013,

disney.jpgSan Diego - A 3-way dispute over the rights to use TINKERBELL as a trademark for cosmetics ended when a panel of three judges determined that Icebox-Scoops, Inc., a Dutch company, could not maintain a lawsuit against Walt Disney Co.

Icebox-Scoops licensed the TINKERBELL trademark in 2005 from Finanz St. HonoreBV, a Netherlands based company. Finanz filed a U.S. Trademark for the TINKERBELL trademark in 1982 for "Children's Cosmetics-Namely, Cologne, Bath Oil, Body Lotion, Body Powder, Bubble Bath, Skin Cream and Sachet" and the trademark registered in 1983.

In 2000, Finanz's rights to the TINKERBELL trademark were affirmed in litigation with Disney. Disney had tried to obtain the trademark due to the well-known character from its "Peter Pan" movie. Disney did not prevail in that case which ended with the two companies entering into a Settlement Agreement.

Thereafter, Finanz entered into the licensing agreement with Icebox-Scoops to create TINKERBELL merchandise. Specifically, Icebox-Scoops was to distribute a TINKERBELL line of beauty products geared toward young women.

However, shortly after entering into the license agreement with Icebox-Scoops, Franz decided to sell the trademark to Disney which cut off Icebox-Scoops's right to use the trademark well before the 5 year license had ended.

As a result of the termination of the license, Icebox-Scoops sued Disney for unjust enrichment and tortious interference. Icebox-Scoops believed that Disney should not have bought the TINKERBELL trademark from Finanz if Disney knew that the license agreement was in place at the time of the purchase. Unfortunately for Icebox-Scoops, Disney disagreed, and so apparently did the 2nd Circuit Court.

The 2nd Circuit held that Icebox-Scoops did nothing to enrich Disney and also did nothing for Disney's benefit and therefore the 2nd Circuit affirmed the dismissal of the unjust enrichment claim. As for the tortious interference claim, the 2nd Circuit held that it was made after the statute of limitations was up and so it also could not be maintained.

Though the case against Disney has been dismissed, Icebox-Scoops' case against Finanz is ongoing. Thus far the two have not been able to reach a settlement.

Facebook Argues TIMELINES is a Generic Trademark, Rival Disagrees

March 11, 2013,

facebook.jpgSan Diego - Timelines, Inc. argued in an opposition filed Wednesday that the company's TIMELINES trademark is not too generic to deserve protection and that Facebook, Inc.'s timeline feature on its popular networking site infringes the trademark.

The company filed the opposition in response to Facebook's motion for summary judgment requesting that the lawsuit be dismissed. The trademark infringement lawsuit began when Timelines sued Facebook one week after it learned the social media website had launched a new feature that allows users of the website to create virtual timelines with photos, videos, and other media devices.

As Timelines' website Timelines.com provides users a relatively similar online service, the company filed the lawsuit against Facebook alleging trademark infringement and claiming that Facebook's new feature would drive Timelines out of business.

In its motion for summary judgment, Facebook argued that though Timelines has three U.S. trademark registrations for the word TIMELINES in conjunction with software services provided over the internet, the term is generic and does not warrant protection. The January 31st motion claimed that since the term is defined as "an arrangement of events or other information in chronological order," and Timelines provides a service that allows users to record and connect events in a specific order, the trademark is merely descriptive of its services.

Timelines countered that genericness should be determined by a jury, rather than in a motion for summary judgment, due to the fact-intensive nature of the process. Timelines also countered Facebook's claims that the term's genericness is evidenced by its appearance in numerous dictionaries.

"Facebook forgets that its very name comes from the 'generic' name that was given to certain college picture books known as 'face books,'" Timelines said. "Moreover, Facebook's own trademark history demonstrates that it seeks trademark protection for terms that appear in dictionaries, including 14 trademark applications for the term 'like' alone, almost all of which concern Facebook's 'Like' button, which its users click on when they ... like something."

Timelines is seeking damages and a permanent injunction prohibiting Facebook from using TIMELINES or any similar version of the trademark. Facebook is requesting a declaratory judgment that the website's timeline feature does not infringe Timelines' trademarks in addition to cancellation of those trademarks.

'FarmVille' Creator Sues Competitor for Infringing VILLE Trademark

February 21, 2013,

zynga.jpgSan Diego - "FarmVille" owner Zynga Inc. filed a lawsuit against Imagenesis Corp. claiming that the company's soon-to-be-released "MafiaVille" game infringes its VILLE trademarks.

Zynga filed the lawsuit in Maryland federal court on Tuesday, alleging Imagenesis' use of the name MafiaVille will infringe several trademarks Zynga owns in connection to its social media games such as "CityVille," "PetVille," "FrontierVille" and "FarmVille."
Zynga claimed that over 65 million people play its "Ville" games each month on various platforms including Facebook and mobile phone apps and that consumers have associated the VILLE trademarks with Zynga long before Imagenesis even thought of the name MafiaVille.

In December 2010, Zynga discovered that Imagenesis had registered the domain name MafiaVille.com and was using the website to promote the "MafiaVille" game. Zynga sent Imagenesis a cease and desist letter to notify Imagenesis of its trademark rights and to demand that it stop using the name.

Imagenesis chose to continue use of the name and filed a trademark application for MAFIAVILLE with the U.S. Patent and Trademark Office. Imagenesis also filed for a declaratory judgment in Maryland federal court asking for a ruling that the name MafiaVille does not infringe or dilute Zynga's trademarks. However, Imagenesis failed to have counsel appear on its behalf and the action was dismissed.

In the complaint, Zynga alleged that not only did Imagenesis know of Zynga's success with its various Ville games in the social gaming sphere before naming its game "MafiaVille," but also that Imagenesis actually chose the name in order to benefit from Zynga's success with its "Ville" games and its game "Mafia Wars."

The company alleged that the name MafiaVille is likely to cause confusion and deceive players into thinking that the game is either made by Zynga or is in some way connected with it. Zynga also claimed that as Imagenesis is aware of Zynga's VILLE trademarks, Imagenesis is willfully infringing its trademarks and is attempting to take advantage of the goodwill Zynga has spent years developing.

Zynga is alleging trademark infringement, dilution, false designation of origin and unfair competition. The company is seeking to block the MAFIAVILLE trademark, an injunction preventing Imagenesis from using the name, damages, Imagenesis' profits earned from using the name and treble damages.

Does "Chocolate Kiss" Colored Flooring Infringe on Hershey's Trademarks?

February 8, 2013,

hershey_kisses.jpgSan Diego - Shaw Industries Group Inc., a carpet manufacturer owned by Berkshire Hathaway Inc, filed a complaint for declaratory relief requesting that a Georgia federal court issue a judgment that the carpet color it calls "Chocolate Kiss" does not infringe The Hershey Co.'s "Kisses" and "Hershey's Kisses" trademarks.

In the complaint, Shaw claims that Hershey has threatened it with a lawsuit over the name, despite the fact that Shaw has used the name for over two decades without any indication of confusion between the products or the companies.

"Declaratory relief is proper in this case because it will clarify and settle the actual, present dispute between the parties as to whether the plaintiffs use of the 'Chocolate Kiss' name violates defendant's rights in its Kiss trademarks," the complaint said. "It will allow Shaw to continue its regular business without fear of incurring further loss, as well as the uncertainty, insecurity and controversy giving rise to this action."

On December 19, 2012, counsel for Hershey sent a cease and desist letter to Shaw demanding that it cease use of the name, claiming that the carpet color name constitutes infringement and dilutes the KISS trademarks owned by Hershey.

Though Shaw introduced the color in January of 1993 and used the name to describe the color for over 200 styles of flooring distributed worldwide, Shaw claims it had never been made aware of any consumer confusion between the name of the carpet color and chocolate Hershey's Kisses. It also alleges that Hershey had never requested it cease using the name before the December cease and desist letter.

Shaw claims it responded to the letter and informed Hershey it had already planned to phase out the "Chocolate Kiss" carpet color and would no longer be using the name by June of this year. The company also claimed in its response that Hershey had in no way shown there was any confusion between the two products.

Hershey responded with another cease and desist letter on January 24th requesting a signed agreement from Shaw that it would cease using the "Chocolate Kiss" name immediately and demanding that it surrender all infringing goods by February 8.
Shaw is requesting that the court issue a declaratory judgment that it is not infringing or diluting Hershey's trademarks and that Hershey essentially agreed to its use of the name by not challenging it for twenty years.