San Diego Trademark Attorney® Blog

April 2012 Archives

Big 4 Tobacco Companies Take Aim at Australian Government to Protect Trademarks

April 30, 2012,

cigarette.jpgSan Diego - Our friends down under are moving toward enforcing tougher anti-smoking laws. In response, the world's big four tobacco firms head to Australian high court to protect their trademarks and logos from Australia's warnings about lung cancer and the associated disturbing images.

Beginning in December, all cigarettes sold in Australia will have to be packaged in olive-green packs with stark health warnings, graphic images, and no brand logos. The manufacturer name will only appear in small, standard font.

This move has large tobacco companies such as Phillip Morris, Imperial Tobacco, Japan Tobacco International, and British American Tobacco fuming, claiming that the new laws which force them to sell their products in unbranded packaging is unconstitutional because it allows the Australian government in essence to acquire their intellectual property, trademarks and logos, without any compensation.

The move by the Australian government to only permit the sale of tobacco products in the unbranded packaging is expected to influence other countries to adopt the same laws. Last week, lawmakers in New Zealand agreed to introduce all tobacco products in unbranded packages with the same warnings, based on Australia's legislation.

Acting on behalf of Japan Tobacco International, the owner of Camel and Silk cut, Gavan Griffith stated that Australia's new laws would use one hundred percent of the back of each cigarette packet and seventy percent of the front for the warnings and lung cancer images. The company's trademark Camel would be reduced to a "bare husk," according to Griffith.

"We say our trademarks are extinguished," said Griffith in court.

The tobacco giants are basing their argument on a part of the Australian constitution which states that the "acquisition of property" by the state must be on "just terms", which means that compensation must be paid.

In response to the constitutional example presented by the tobacco companies, the Australian government said that it would be inappropriate for it to compensate companies for their trademarks for requiring them to market their products in a way that would prevent damage to public health. Adding insult to injury, Australia's high court chief justice, Robert French, said that this particular case was in a "different category" because of the risk of fatal health issues caused by smoking.

Regardless of tougher anti-smoking laws and campaigns in the U.S. and Australian markets, in 2010 British American Tobacco reported an increase in profits of 5%, while Phillip Morris International, the manufacturer of the Marlboro brand, reported a 15% increase in profits last year. The increase was largely due attributed to growth in the Asian market.

Famous Filmmaker Sues San Francisco Eatery for Trademark Infringement

April 19, 2012,

pizza.jpgSan Diego - Francis Ford Coppola, the famous film director, producer, and screenwriter responsible for creating The Godfather epics, is suing the owner of a California restaurant for trademark infringement. Coppola is claiming that the owner of Tavola Italian Kitchen restaurant in Novato is infringing the Oscar-winning filmmaker's "a tavola" trademark he uses to market his own restaurants.

According to the complaint, filed by Coppola and his family trust in a San Francisco federal court, "A tavola" is a registered trademark, which in Italian means restaurant patrons aren't provided with dinner menus and instead are served family-style Italian dishes. Coppola registered "A tavola" as a trademark because it is his favorite way to enjoy a meal and he also uses it to market his eateries located at his winery in Napa Valley and in San Francisco.

Coppola's complaint states that his restaurants have used the trademark since 2008, with the United States Patent and Trademark Office issuing a registration for last year. Reportedly, the filmmaker's company had sent a cease and desist letter to Tavola Italian Kitchen asking it to stop using the name, to no avail.

The trademark infringement complaint contends that due to the close proximity between Tavola Italian Kitchen and Coppola's restaurant (within fifty miles), the defendant's use of the name will likely cause a confusion with patrons. Coppola's winery's website refers to "a tavola" to promote its casual dining venue each Tuesday night.

"We're struggling to stay alive, and now we have this, one of the biggest names in American history steps on us?" stated Anthony Pirraglia, owner of Tavola Italian Kitchen. "They don't have anything else to do? It's incredible."

Pirraglia also said he was surprised that Coppola was able to trademark the Italian term since it is so generic and widely used by restaurants all over. He added that his family chose the name for the restaurant nine months ago in an attempt to revitalize the small, flailing eatery located in a shopping mall.

"We're a small, seventy-seat restaurant in a shopping center," Pirraglia said, adding that "it's absurd" to claim that consumers would be confused that it's Francis Ford Coppola's estate.

In 2010, Coppola successfully sued a Spanish winery in Texas for trademark infringement. Casas Naveran winery in Austin was ordered to scrap its label used on its rose and white wines that Coppola alleged was a copy of the "Sofia" label he uses on wines in honor of his daughter, actress and director Sofia Coppola. Coppola was reportedly awarded undisclosed monetary damages, profits, attorneys' fees and litigation costs.

Neil Young Secures "SQS" Trademark for High-Res Audio Technology

April 11, 2012,

dvd-blue.jpgSan Diego - The United States Patent and Trademark Office has recently registered the trademark "SQS" to American rocker Neil Young. The "SQS" reportedly stands for "studio quality sound."

Last year, Young issued a press release stating that he was actively pursuing a music format that provides a much richer sound experience than the common MP3 format. A statement from the press release reads:

"Young is also personally spearheading the development of Pono, a revolutionary new audio music system presenting the highest digital resolution possible, the studio quality sound that artists and producers heard when they created their original recordings. Young wants consumers to be able to take full advantage of Pono's cloud-based libraries of recordings by their favorite artists and, with Pono, enjoy a convenient music listening experience that is superior in sound quality to anything ever presented."

Neil Young's new music format will apparently use a technology similar to Direct Stream Digital (DSD). DSD uses 1-bit sampling at 2.8224 Mhz, which is sixty-four times greater than the 44.1 Khz used in CD's. With the new format, a consumer's average music file could possibly be as large as 300 MB to hold the entire set of studio sound data.

Rolling Stone Magazine recently reported that Young's Pono platform has had six trademark filings thus far, which are Ivanhoe, 21st Century Record Player, Earth Storage, Storage Shed, Thanks for Listening, and SQS. Young's SQS trademark is described as "audio and video recordings featuring music and artistic performances; high resolution music downloadable from the Internet; high resolution discs featuring music and video of music and artistic performances; pre-recorded digital media containing audio and video recordings featuring music and artistic performances for storage and "playback" as well as "online and retail store services featuring music and artistic performances."

Young's reasoning behind the new format was that he claimed the sound of modern music made him "angry" and stated that today's audio quality is the "worst sound we've ever had." He also stated that Apple co-founder, the late Steve Jobs, would have been able to help him preserve the sound quality of vinyl and also said that digital downloads were "degrading" the standard of audio.

Trademark Dispute Becoming a Dogfight in New Zealand High Court

April 2, 2012,

dog.jpgSan Diego - Pet food manufacturers Mars and Heinz Wattie's are taking their trademark infringement battle to a High Court in Wellington, New Zealand.

The United States-based Mars Incorporated, widely known for its candy brands, is appealing a decision by New Zealand's assistant commissioner of trademarks to reject its application to trademark the term "Advance Advanced Pet Nutrition." Mars produces well-known pet food brands such as Pedigree and Whiskas.

Mars' trademark application had been opposed by Heinz Wattie's, which owns the Chef and Champ brand, because it claimed that it had already used the unregistered trademarks "Champ Advanced Dog Nutrition" and " Advanced Dog Nutrition" in New Zealand.

The assistant trademark commissioner's decision, dated September 14, insisted that if Mars were to use the phrase from its trademark application, "it is likely that a substantial number of persons in the relevant market would be confused." Section seventeen of New Zealand's 2002 Trademark Acts states the commissioner must not register any matter as a trademark if its use is likely to deceive or cause confusion.

In addition to rejecting the Mars application, the trademark commissioner awarded Heinz Wattie's costs of $3,340.

The trademark attorney representing Mars in New Zealand contends that the Chef and Champ taglines were never registered as trademarks in the country, nor had Heinz Wattie's ever applied for their registration. He went on to say that the phrases were simply descriptive of the products and were a relatively insignificant part of the product's packaging. Instead, he claimed, pet food consumers would recognize the product by its trademarked logo, which was displayed liberally on the product's packaging.

He added that Mars was seeking a distinctive trademark because of its unique combination of "advance" and "advanced."

However, the Heinz Wattie's attorney argued that although the New Zealand company's phrase was not registered as a trademark, it has been used on the Chef and Champ packaging for over twenty years and is indeed an identifiable component to the Champ trademark.

"It is inevitable that members of the public who have seen this product on sale for ten years or longer will make a connection with that tagline...it is part of the branding," stated the Heinz Wattie's attorney.

In 2010, Mars in New Zealand earned profits of $14.8 million on sales of $193.9 million, according to the most recent financials filed with the company. Hastings, New Zealand-based Heinz Wattie's reported profits of $92.7 million on sales of $735.6 million for the year ending April 27, 2011.