San Diego Trademark Attorney® Blog

November 2011 Archives

Hard Rock Café Chain Sued for Trademark Infringement

November 28, 2011,

hard_rock_cafe.jpgSan Diego - The internationally-known Hard Rock Café chain is being sued for trademark infringement in Las Vegas by England's Cavern Club, known as the birthplace of the Beatles.

The complaint, filed in U.S. District Court, is accusing Florida-based Hard Rock Café International of trademark infringement because it has recently opened a small events room called "The Cavern Club" in one of its Las Vegas locations. In its lawsuit, the Cavern Club of Liverpool, England claims that it is a legendary nightclub, which opened in 1957, and was made famous after the Beatles gave hundreds of performances there. The lawsuit also claims that the Cavern Club was known for hosting other famous acts like the Rolling Stones, the Yardbirds, Elton John, the Kinks, and The Who.

Apparently, the Cavern Club and Hard Rock Café International, which owns restaurants, hotels, and casinos all over the world, have disagreed in the past regarding Hard Rock's use of the Cavern Club trademark. The Cavern Club owns trademark rights to that name in the United Kingdom, Australia, Hong Kong, Canada, Brazil, and the twenty-five European Community nations, while Hard Rock owns the U.S. trademark for the Cavern Club name.

The Cavern Club's recent trademark infringement lawsuit is in response to the September 29th court decision that will allow Hard Rock to uphold its U.S. rights to the trademark. That decision was made by the U.S. Trademark Trial and Appeal Board, which dismissed the Cavern Club's 2005 opposition to the Hard Rock's trademark registration.

In addition to alleging trademark infringement, last week's lawsuit is also accusing the Hard Rock of violating Nevada's business practices and alleges common law unfair competition. Lawyers for the Cavern Club called the Trademark Trial and Appeal Board's September 29th ruling "erroneous" and say that the Hard Rock's use of the trademark "is likely to cause and has caused confusion, mistake or deception" as to whether the Hard Rock venues are associated to Liverpool's Cavern Club.

While the Cavern Club can claim that its trademark is famous and thus that it gained some rights in the U.S., it appears that the Cavern Club may regret not protecting its trademark in the U.S. long ago. Owned by Florida's Seminole Indian tribe, Hard Rock Café International has two cafes in Las Vegas. However it does not own the Hard Rock Hotel and Casino in Las Vegas. It remains tangled up in a separate trademark litigation with the hotel/casino.

South By Southwest Music Festival Sues Austin Area Promoter For Trademark Infringement

November 22, 2011,

concert.jpgSan Diego - Each year Austin, Texas is home to one of the country's most popular music festivals, South By Southwest (SXSW). The festival takes place in downtown Austin and is concentrated in the Convention Center. Each year, the festival features hundreds of musical acts and has grown to include a film festival and interactive conference. To advertise and promote the festival, SXSW has obtained trademark registration for several logos and other trademarks.

SXSW recently filed an action in federal district court in the Western District of Texas alleging that concert promoter Joseph Gingerella doing business as Black Ice Booking infringed trademarks owned by SXSW. SXSW claims that Gingerella had booked and promoted concerts directly coinciding with the South By Southwest Festival. SXSW also claims that Gingerella has held "battle of the bands" type competitions to compete for a booking in Austin during the festival. SXSW claims that naming these competitions, "Road to South By" and advertising that the winner will play a show "sponsored, sanctioned, and produced" by SXSW constitutes trademark infringement.

Simply booking a concert during the musical festival at an Austin area venue would not constitute trademark infringement. However, advertising that the event was indeed sponsored, sanctioned by, or produced by the festival in an attempt to piggyback on the festival's reputation could amount to trademark infringement. SXSW is seeking actual damages, treble damages, and an injunction prohibiting Gingerella from continued infringement of the SXSW trademark. SXSW also seeks $2 million in statutory damages and attorney's fees.

Gingerella issued a statement denying the trademark infringement and claiming that while he has put on concerts during the music festival at Austin area clubs, he did not advertise that the concerts were sponsored by SXSW. Gingerella also claimed that his events were free and that he does not profit from his concerts scheduled during SXSW.

Kellogg's Ends Toucan Sam Trademark Dispute with Charitable Donation

November 16, 2011,

toucan.jpgSan Diego - Kellogg Co. of Battle Creek, Michigan has decided to drop its trademark infringement claims against the Maya Archaeology Initiative (MAI), a Northern California-based non-profit organization. Kellogg and the MAI issued a joint statement saying that in addition to dropping the lawsuit, Kellogg will be making a $100,000 contribution to help launch one of MAI's priority projects.

In its lawsuit, filed earlier this year, Kellogg claimed that the toucan in MAI's logo was a trademark infringement with its own Toucan Sam trademark used to market its famous Froot Loops breakfast cereal. Kellogg Co., founded in 1906, is the world's leading breakfast cereal manufacturer and marketer and is also a leading producer of other breakfast items and snack foods. The Maya Archaeology Initiative is a non-profit group that provides educational and training opportunities in Mayan history and culture to Guatemalan young people in order to protect and improve Northern Guatemala.

Attorneys for Kellogg had originally asked the non-profit to cease and desist using the Toucan logo as its symbol. The Kellogg Toucan Sam is a cartoon-like, bright blue bird with a colorful, striped beak meant to imitate the colors in its Froot Loops cereal. The MAI toucan is a more realistic version endemic to Central America and is black with a yellow beak. After months of discussions, Kellogg decided to drop the case after determining that a likelihood of confusion was not likely.

After Kellogg disclosed its contribution to the charitable organization, MAI president Dr. Francisco Estrada-Belli said, "Kellogg's important contribution to the Maya Archaeology Initiative will help us achieve our goal of building a Maya Cultural Center in Peten (Guatemala), the cradle of Maya history, so children, families and visitors can learn about the Maya and their rich heritage. We are grateful to Kellogg for joining us in these efforts."

In addition to making the generous contribution, Kellogg will also be featuring major Mayan accomplishments and a link to the MAI website next year on its Froot Loops cereal boxes.

Universities Seek Trademark Protection As .XXX Top Level Domain Launched

November 10, 2011,

domain-name-http- www.jpgSan Diego, CA - Recently, the sponsored top-level domain .xxx was launched to cater to adult entertainment websites. The domain will give pornographic and other websites the option to adopt a domain name other than .com. As the domain becomes available for registration to closed groups, universities have been purchasing domain names with the .xxx extension to protect university trademarks.

The .xxx domain began a "sunrise phase" on September 7, 2011, allowing trademark owners to purchase domain names containing their trademarks or combinations thereof. As of November 8, the domain began its "land rush" phase, in which registration is available to selected parties.

Universities have taken advantage of the opportunity to purchase their own domain names with the .xxx extension for only a few hundred dollars. Washington University in St. Louis purchased washu.xxx, Washingtonuniversity.xxx and wustl.xxx. The University of Missouri-Columbia registered Missouri.xxx and missouritigers.xxx. Spokespersons for the universities stated that the domains were registered to prevent internet users from encountering university trademarks at these .xxx sites. Though the universities could potentially file a claim for trademark infringement if their trademarks are adopted as domain names and infringed, the universities elected to act preemptively to prevent an association between the schools and adult content.

Many universities have also purchased domain names similar to their official website that end in .com or .net. In most cases, the universities use the alternate domain names to redirect users to its official site. However, Washington University's trademark manager stated that in this case the move was purely defense. The .xxx sites will not redirect users.

While many in the adult entertainment business plan to take advantage of the extension, some claim that the domain may allow internet services providers to block x-rated material with greater ease. The .xxx domain name will not be mandatory for pornographic and adult entertainment sites who may still operate under the .com domain.

Is the Apple App Store a Generic Trademark?

November 4, 2011,

iphone-apps.jpgSan Diego, CA - "App Store" may be synonymous with Apple's electronic storefront for handy software applications but the term could be too descriptive to merit trademark protection.

In an effort to protect the "App Store" trademark, Apple once again finds itself embroiled in a legal battle, this time against both Amazon and Microsoft. Amazon recently opened the "Amazon Appstore" for the Android operating system, Google's mobile operating system. While Microsoft's application storefront goes by the dissimilar "Windows Marketplace for Mobile," they have chosen to enter the battle nonetheless, perhaps to get back at Apple for attacking the Windows trademark throughout the years as being too descriptive itself. However, Intel has chosen to avoid entering the fray and instead named its application storefront "Intel AppUp."

A trademark must identify and distinguish a company's product or service from those sold by others. A term is merely descriptive or generic when it merely employs the common name of a product or service or describes it rather than designates the source of goods. Perhaps the true issue is that Apple itself created such a popular term in "app store" that the general public forgot who was the first to coin the term. No one can argue that Apple was the first to coin the term "App Store," with its original electronic storefront that opened in 2008, compared to the Amazon "Appstore" which did not open until 2011.

As part of this dispute Apple has alleged that the "App" in App store is short for Apple rather than Application. We're not sure most consumers would see it that way. At first blush, we think that Apple will be hard-pressed to get this trademark registered - but stay tuned.