San Diego Trademark Attorney® Blog

Amazon, Apple Ordered to Settlement Talks in Trademark Infringement Case

January 17, 2013,

amazon.jpgSan Diego - A magistrate judge ordered Inc. and Apple Inc. to attend settlement conferences in an attempt to get the companies to resolve their differences before the upcoming trial over Apple's claim that Amazon is infringing its APP STORE trademark.

On Tuesday, U.S. Magistrate Judge Elizabeth D. Laporte of the Northern District of California ordered the opposing companies into talks to be attended by attorneys or executives with full power to negotiate and settle the case. The settlement talks are scheduled for March 21st in San Francisco.

Judge Laporte instructed both sides to prepare to discuss their settlement objectives, obstacles that may prevent settlement, and to think of creative resolutions to the dispute. Judge Laporte said both sides should be prepared for a long and candid discussion.

"It is not unusual for conferences to last several hours or at times, all day," Judge Laporte's order reads. "No participant in the settlement conference will be permitted to leave the settlement conference before it is concluded without the permission of the settlement conference judge."

Amazon's Appstore was officially launched in March 2011 and offers app downloads for smartphones that run on Google Inc.'s Android platform. That same month, Apple filed a lawsuit against Amazon claiming trademark infringement and unfair competition. In November 2011, it amended the complaint to add a false advertising claim. The complaint alleges that Amazon's use of APP STORE is deferring profits from Apple to Amazon and is diluting Apple's trademark because Amazon offers substandard products under a confusingly similar name.

Apple's false advertising claim was dismissed on January 2 when U.S. District Judge Phyllis Hamilton ruled that Apple did not provide consumer research, market studies or any other data that proves that Amazon had in any way tried to deceive consumers by calling their online app service Appstore.

Judge Hamilton also struck down Apple's argument that Amazon was attempting to impress upon consumers that its apps are the same as Apple's. The judge said that no reasonable customer would link Amazon and Apple's app products, considering apps from the two sources cannot be downloaded onto the same device.

Apple is still attempting to have a permanent injunction entered against Amazon prohibiting it from using APP STORE and the company is seeking damages, profits allegedly derived from using the trademark, costs and attorney's fees.

If the two companies are unable to reach a settlement, the case is scheduled to go to trial in San Francisco on August 19th.

Neil Young Files Trademarks for Pono Brand

December 20, 2012,

music.jpgSan Diego - Neil Young has filed two trademark applications in order to promote his impending music service Pono. Pono will offer digital-to-analog music downloads along with portable music players.

Young has long looked down upon the quality of music available for MP3 players and the big businesses that he claims do not know what good music should sound like. According to his new memoir, Waging Heavy Peace, Young is attempting to "rescue recorded sound so people can feel music again."

Pono, which is Hawaiian for righteous, will attempt to provide music that is "the best it can be". He wants the music to have all of the nuance and clarity of the original work and Young will have each song certified by the artist or record company that owns the rights to the work before it will be offered on Pono.

Young has begun testing the Pono sound by playing his digital-to-analog tracks in a 1978 Cadillac Eldorado for big names in music, such as Kid Rock, Beastie Boys' Mike D, members of the Red Hot Chili Peppers, and Tom Petty. He recorded the various artists' reaction to the music to use in marketing campaigns.

Young filed trademark applications for PONO PROMISE and 21ST CENTURY DIGITAL near the beginning of December, both of which he is already using on his website, Young registered the trademarks for both online and retail store services along with MP3 players and other devices used to listen to music and music cases.

Investor Gigi Brisson, who registered the domain name and is listed in a recent U.S. Securities and Exchange Commission filing as a director of one of Young's companies Ivanhoe Inc., said that it is too early to say much about Pono. He said that the company is still in its infancy and anything could happen, as there are still too many variables involved.

Young, however, has put Pono on Facebook and Twitter and has been trying to spread word about the project. According to tweets by Young, Pono's web-based music library will be in place by summer 2013 and he expects to have digital-to-analog portable players ready for purchase around the same time.

132 Websites Seized for Selling Counterfeit Goods During Cyber Monday Crackdown

November 27, 2012,

domain-name-http- www.jpgSan Diego - Government officials seized 132 websites yesterday in the third annual Cyber Monday crackdown.

The Immigration and Customs Enforcement (ICE) section of the U.S. Department of Homeland Security began Operation in Our Sites in June of 2010 to target websites that attempt to sell counterfeit and pirated goods to unaware consumers.

"The sale of counterfeit U.S. brands on the Internet steals the creative work of others, costs our economy jobs and revenue and can threaten the health and safety of American consumers," said ICE Director John Morton. "We are dedicated to protecting the jobs, the income and the tax revenue that disappear when counterfeit goods are trafficked."

The seizures include sites that sell clothing, jewelry, sporting goods, luxury goods such as designer shoes handbags and sunglasses and pirated goods, including DVDs, music and software.

Operation in Our Sites operates year round, but it has made Cyber Monday, the biggest online shopping day of the year, the largest seizure day of the year. ICE was joined in the crackdown this year by Europol and European law enforcement agencies in Belgium, Denmark, France, Romania and the United Kingdom.

The seizures are made after the government receives verification from owners of trademarks and copyrights that a specific website is selling goods that infringe upon their rights.

Once the government has shut down the infringing site, consumers attempting to visit the site will only see a banner notifying the consumer of the seizure. The banner also provides information on the infringement for the consumer.

Among this year's seizures was a San Diego based company, Staxxs on Deck. On its website at the company sells counterfeit Nike footwear. According to the affidavit, the website had made $1.5 million in fake goods.

This years crackdown resulted in one arrest and more than $175,000 in PayPal account seizures. Despite this, the government has a hard time prosecuting the operators of most infringing sites since they are generally located overseas, mainly in China.

When the website is seized, owners can file a petition for a return of their domain name. If the owners choose not to file the petition or it is unsuccessful, the domain name is forfeited to the government.

"Tebowing" Moves One Step Closer To Registered Trademark Status With USPTO

November 5, 2012,

football.jpgSan Diego - Tim Tebow's "Tebowing" slogan is now one-step closer to trademark registration. "Tebowing" became a widespread phenomenon when the second year player now with the New York Jets was photographed bowing in prayer in the end zone. His pose, head bowed, down on one knee, with a clenched fist against his forehead quickly became a sports fan favorite.

Not long after the pose became popular, Jared Kleinstein, a Denver-born Broncos fan, started a website,, and began using Tebow as a verb. At that time, Tebow approved of the growing phenomenon, even going as far as to say he loved the hype over "Tebowing" on his twitter account. Later that year, Kleinstein filed an application to trademark the slogan "Tebowing" and began to sell items of clothing with the phrase on it.

However, as the Kleinstein application moved forward, XV Enterprises, a marketing and consulting firm owned by Tim Tebow, protested the application. Through his trademark attorney, Tebow argued that consumers would incorrectly think the Kleinstein goods were connected to Tebow or his charity the Tim Tebow Foundation. XV Enterprises hopes to register the trademark on Tebow's behalf for use on such items as clothing, pencil sharpeners, and holiday ornaments.

Because of XV Enterprises' opposition, the trademark office issued a refusal of registration to Kleinstein in February saying the material "includes matter which falsely suggests a connection with Tim Tebow. Accordingly, registration is refused under Trademark Act Section 2(a)." U.S. Patent and Trademark Office records show that there have been a number of applications for Tebow related trademarks in the last year. Most of the applications have already been rejected. After Kleinstein's recent application for "Tebowing" was rejected, Tebow's company immediately filed an application to claim the trademark.

In early October, the trademark "Tebowing" was published for opposition. As such, the trademark will be published and anyone who wants to oppose the registration has 30 days to provide adequate reasoning why the registration should not move forward. If no one opposes the registration, or the opposition is ruled to be unsubstantiated, then Tim Tebow's company will officially own the trademark for "Tebowing".

Google Fails To Shake Cybersitter AdWords Trademark Infringement Claims

October 25, 2012,

google.jpgSan Diego - Google Inc. cannot slip away from Cybersitter LLC's claims that it aided and abetted a competitor in misusing Cybersitter's trademarked name in advertisements drawing traffic away from Cybersitter's business, a Los Angeles federal judge ruled Wednesday.

Cybersitter, which developed, markets and sells an Internet content-filtering program, sued Google and ContentWatch Inc. over ContentWatch's marketing of its own Internet content-filtering software, Net Nanny, and its use of Google's AdWords paid advertising program.

A portion of Google's revenue comes from displaying sponsors' paid advertisements on its search engine and other websites. In response to keyword searches on Google's search engine, sponsors' paid advertising results, which it calls "sponsored links" are displayed with other search results.

The AdWords program specifically allows ad sponsors to purchase certain keywords that trigger the sponsor's ad whenever a Google user conducts a search through its search engine.

Earlier this year, Cybersitter learned that ContentWatch was running paid ads for Net Nanny through AdWords that included the Cybersitter trademark. When an Internet user would search on Google for Cybersitter or similar terms, ContentWatch's ads with the trademark would be displayed, often as the first result in the user's search, according to the court.

Google has violated federal and California laws by selling the right to use the Cybersitter trademark to ContentWatch, which in turn illegally uses the trademark in its online ads through the AdWords program, Cybersitter alleges. It has also wrongly permitted and encouraged ContentWatch's use of the trademark in its online ads, Cybersitter claims.

Judge Ronald S.W. Lew denied Google's motion to transfer the case to Santa Clara federal court, as well as its motion to dismiss Cybersitter's claims, saying Cybersitter had adequately pled and provided sufficient facts to support its trademark infringement claims.

"In sum, for the state law claims of trademark infringement, contributory infringement, and unfair competition, plaintiff has sufficiently pled the facts necessary to establish defendant's acts as independent torts that are not barred by [Communications Decency Act] immunity," Judge Lew said.

The judge did, however, grant Google's motion to dismiss Cybersitter's claim for unjust enrichment.

Facebook Abets Counterfeit NFL Gear Sales, Lawsuit Says

October 23, 2012,

football.jpg San Diego - A seller of officially licensed National Football League merchandise filed a putative trademark infringement class action against Facebook Inc. on Monday over its alleged complicity in publishing online advertisements for fake NFL apparel, accessories and more.

Inkies Sports Inc., which does business as Krystal's NFL Shoppe, is seeking to represent a class of retailers and wholesalers of officially licensed NFL apparel who have been harmed in their business by purveyors of counterfeit goods advertised on websites like Facebook, according to its complaint in New Mexico federal court.

As of 2011, ads for counterfeit NFL merchandise started showing up in sponsored ads on Facebook with increasing frequency, offering jerseys and other items for cut-rate prices alongside "pictures of what appears to any reasonable person to be authentic, officially licensed NFL merchandise," the complaint says.

"There is no way for a Facebook user to determine from the pictures and the text which accompanies the counterfeiters' ads whether the merchandise is authentic or not," it says.

Inkies says it began paying for sponsored ads on Facebook in February, but quickly discovered that its own marketing efforts were being overshadowed by those of the counterfeiters.

"Ads for counterfeit goods are regularly displayed on Krystal's Facebook page, leading even loyal customers to question whether these ads are supported, or even sponsored, by Krystal's," the complaint says. "Krystal's has inadvertently been placed in the untenable position of actually lending credence to the counterfeit ads, by virtue of Facebook's display of those advertisements on Krystal's page."

Inkies has lodged multiple complaints with Facebook about the ads to no response, according to the company.

The economic impact of the fraudulent ads on Inkies and other class members will probably run into millions of dollars, given the cut-throat nature of the world of low price internet retail, Inkies asserts.

Once a consumer clicks on one of the counterfeiters' ads and places and order, the merchandise arrives postmarked from China, and it immediately becomes apparent that the merchandise is substandard, Inkies says. Since the Chinese government blocks access to Facebook, counterfeiters in China need an intermediary, Inkies claims, such as the advertising firm AdSage, which is also named as a defendant in the complaint.

North Face Shuts Down "Butt Face" Apparel Maker With Trademark Contempt Ruling

October 18, 2012,

fleece.jpg San Diego - The makers of a parody line of clothing named "The Butt Face" have been held in contempt for violating a 2010 injunction barring them from any use of The North Face Apparel Corp.'s trademarks or similar names, according to a consent judgment filed Tuesday.

A Missouri district court ordered James A. Winkelmann Sr., James A. Winkelmann Jr. and their company Why Climb Mountains LLC to stop using The Butt Face trademarks or any other reproduction, counterfeit, copy or imitation, specifically including parody, of The North Face's trademarks. The clothing makers must also cease any communications of any kind about The North Face or their now-defunct clothing lines The South Butt and The Butt Face.

The Winkelmanns are enjoined from passing off any product as somehow related to The North Face or using any name likely to dilute, confuse or deceive. They must also turn over all domain names and Twitter accounts that violate the prior injunction or the current order, the court said.

The defendants must turn over any goods bearing The Butt Face trademark for destruction, and disgorge payments of $65,000 The North Face previously made to them.

The 2010 consent injunction came as part of a settlement agreement, under which the Winkelmanns agreed not to use The South Butt trademark or any other similar names that might be confused with The North Face. The North Face first brought its infringement claims against the Winkelmanns in 2009.

Since the entry of that consent injunction, the Winklemanns created Why Climb Mountains and knowingly and intentionally engaged in conduct in direct violation and reckless disregard of the injunction, with the intent to trade on The North Face's fame, goodwill and trademarks, The North Face's contempt motion, filed in August, said.

"The Winkelmanns used the original lawsuit as a lucrative marketing device to promote sales of their infringing products through a media blitz," the motion said. "We assume they will attempt to same here. Thus the sooner this matter is heard and resolved, the better."

Fifth Circuit Says Mission Burrito Trademark Suit Has Legs

October 16, 2012,

burrito.jpg San Diego - The Fifth Circuit on Thursday ruled that Mexican food company Gruma Corp. has valid claims for trademark infringement against the Texas fast food chain Mission Burrito, reversing a Texas district court's dismissal of Gruma's case.

Gruma, which markets its products nationwide under the Mission trademark, sued Mission Burrito owner Mexican Restaurants Inc. in September 2009 for infringement and dilution. The district court ruled that there was no likelihood of confusion between the two trademarks and no dilution, and tossed Gruma's complaint.

The district court erred in its legal analysis of the claims, and proper application of the relevant factors favors Gruma, the appeals court ruled.

Gruma's Mission products include tortillas, tortilla chips, taco shells, guacamole dip, and salsa. The company has obtained 29 federally registered trademarks for the Mission brand since 1982. The Mission logo includes the word under a Spanish-style bell tower with a rounded top, usually in red, orange and white.

Mexican Restaurants, meanwhile, owns several different Mexican concept restaurants in Texas and elsewhere, including the Houston-based Mission Burrito restaurants, which first started in 1995 and obtained a Texas trademark in 1997. The restaurants are considered fast-casual and serve tortilla chips, dips and salsa, and fresh tortilla- based Mexican food items such as burritos, tacos, and quesadillas.

The Mission burrito logo is the top of a Spanish mission style church topped by a cross in black and white. Mexican Restaurants obtained a federal trademark for the logo and name in 2008.

The district court correctly found that four of the relevant factors favored Gruma, but misapplied the law relating to two others and erred in not fully analyzing two more which should be at least neutral, if not in Gruma's favor, the company argued on appeal.

The appeals court agreed, noting the visual similarities between the two trademarks.

"We find it inescapable that both are clearly employing the device of a mission-style tower associated with Mexico and South Texas to draw an association with the name Mission and the Mexican food each party sells," the Fifth Circuit said.

The restaurant business could also be a natural area of expansion for Gruma, thus increasing the likelihood of confusion, the appeals court ruled, in contradiction to the district court's finding.

TTAB Rejects "Verde" Power Supply Trademark As Merely Descriptive

October 10, 2012,

power on.jpgSan Diego - The U.S. Patent and Trademark Office's Trademark Trial and Appeal Board has affirmed a PTO examiner's refusal to register the trademark "Verde" to Verde Power Supply Inc., saying the proposed trademark as used in connection with the company's goods is only descriptive.

Verde Power Supply refused to provide the examiner with information she requested during the registration process about the company's business operations, on the grounds that doing so would reveal its trade secrets, the TTAB said. TTABlog first reported the board's ruling on Wednesday.

The company applied to register the trademark in January 2010 for electrical and electronic devices for power supply technology, including power supply units, current-voltage converters, DC converters and electronic power supply circuitry.

After the company declined to divulge its claimed trade secrets, the examining attorney asked whether the goods are energy efficient or environmentally friendly. Verde Power Supply did not acknowledge the questions or provide any information regarding the goods, and did not mention them on appeal either, the TTAB said.

"Applicant did not contest the revised request on the ground that it would require applicant to divulge trade secrets, or that it was not legitimate; applicant did not make any response to this request whatsoever," the board said.

The examiner's questions regarding energy efficiency and environmental friendliness were proper to ask, as they concern facts that pertain to the descriptiveness refusal, the TTAB said.

Noncompliance with a legitimate requirement for information or materials can, in and of itself, be a valid basis for denying registration, according to the board.
"We make the presumption that the answers to the examining attorney's questions would be unfavorable to applicant, and that applicant's goods are both environmentally friendly and energy efficient," it said.

The trademark "Verde" would directly and immediately convey to the purchasers of electrical and electronic devices that the equipment in question is environmentally friendly, the board said.

TTAB Judge Ellen Seeherman dissented from the majority ruling, saying that the PTO has failed to prove that "Verde" is merely descriptive.

The office has not shown that Spanish-speaking purchasers of Verde Power Supply's goods would understand "Verde" as having the meaning of energy efficient or environmentally friendly, or that those purchasers would immediately understand from the trademark athat the goods have those qualities, she said.

PTO Gets Tough On Green Trademark Claims

October 5, 2012,

kumquat_tree_.jpgSan Diego - The U.S. Patent and Trademark Office has quietly adopted a more stringent approach to registering "green" trademarks, in practice if not in policy, requiring that applicants demonstrate their genuine environmentally friendly qualities.
Trademark examiners have reportedly started to deny increasing numbers of applications for green trademarks that do not include a statement of environmental friendliness. The trend was first noted by in early October, and Forbes subsequently picked up the story, but neither article directly cited hard evidence in support of the reports.

The PTO is said to be refusing the trademark applications on the grounds that the Lanham Act allows it to deny applications that contain deceptive content. Such a justification could suggest that the PTO is taking the initiative to aid in combating the practice of "greenwashing" products that do not actually live up to their green claims.
The PTO, for its part, said no policy change was afoot.

"Contrary to recent reports, the PTO has not adopted a new policy for trademark applications that include the word 'green,'" a PTO representative said Friday. "In fact, there has been no recent policy statement or change in this area."
"All applications are reviewed for statutory compliance with the provisions of the Trademark Act, including Section 2(a) which prohibits the registration of deceptive matter (among other things)," the representative said.

The PTO declined to comment on whether any recent denials of applications could have given rise to policy rumors.

The office doesn't have to adopt or announce any formal new policy to subject green trademarks to greater scrutiny, though, trademark attorney Michael Tschupp said. The PTO already has guidelines and procedures in place for examiners confronted with potentially deceptive matter in a trademark, and that guidance includes provisions for environmental claims, he said.

Tschupp, the proprietor of green trademark news blog, said his own clients have not yet reported any newly aggressive approaches to their green trademarks on the part of PTO examiners. Applicants can expect to see more denials based on deceptiveness going forward, though, he said.

When a trademark conveys some information about a product that is not accurate, the PTO has two basic options, Tschupp said: refuse to register it on grounds of misdescriptiveness, or go a step further and refuse it as deceptive.

A misdescriptiveness refusal can be overcome, and still leaves open the possibility of registering the trademark on the supplemental register, rather than the principal register, Tschupp said. A refusal based on deception, though, is more serious, making the trademark unregisterable under any circumstances, and that is what applicants are now starting to see at the PTO, he said.

An increase in those refusals for green trademarks could lead to challenges to environmental friendliness claims showing up in trademark infringement disputes and litigation, Tschupp said.

"As people are now having to explicitly make these claims in their applications, defendants are going to be able to challenge the underlying environmental benefit of these products," he said. "It basically creates a whole new defense."
The reports of green trademark refusals come on the heels of the Federal Trade Commission's recent updates to its Green Guides on environmental marketing claims.
The Green Guides outline general principles that apply to all environmental marketing claims and provide guidance regarding many specific environmental benefit claims. The guides explain how reasonable consumers likely interpret each such claim, describe the basic elements necessary to substantiate it, and present options for qualifying it to avoid deception.

Both the PTO and FTC developments can be seen as part of a greater attempt to crack down on greenwashing on the part of the Obama administration, according to Tschupp. Trademark examiners in particular now have much better guidelines for defining what is and is not green to use as a basis for deceptiveness decisions, Tschupp said.
"They have a measuring stick they didn't really have before," he said.

Wrigley At Risk Of Sugar-Free Gum Trademark Infringement

October 2, 2012,

chewing_gum_wrigley.jpgSan Diego - There is enough of a possibility that William Wrigley Jr. Co.'s Swerve sugar-free chewing gum is infringing a trademark for the name Swerve for artificial sweeteners to consider a preliminary injunction barring Wrigley's use of the name is warranted, an Illinois federal judge ruled Friday.

Swerve IP LLC had asked for the preliminary injunction in Wrigley's declaratory judgment lawsuit seeking to avoid liability for infringing Swerve IP's trademark. Judge Harry D. Leinenweber put off his final decision on Swerve IP's motion until a hearing can be held, but ruled that it is possible for Swerve IP to succeed on the merits of its argument.

Swerve IP holds the trademark for the word Swerve in relation to the company's all-natural non-sugar sweetener, which it has used since 2001. The U.S. Patent and Trademark office officially registered the trademark in September 2009, covering natural sweeteners including a large class of food and candy products.

The sweetener is sold through online retailers and some physical stores, and is used in the commercial manufacture of some food products, but Swerve IP hopes to expand into more mainstream markets, including chewing gum, according to the judge.
Wrigley's popular "5" brand of chewing gum, meanwhile, features a flavor called Swerve, so named because it allegedly changes flavors as it is chewed. The gum is mainly sold in grocery and convenience stores.

Wrigley learned of Swerve IP's trademark in 2010, and at that time applied to register the trademark for the word Swerve in relation to chewing gum. Swerve IP opposed the registration, and the matter remains pending before the PTO's Trademark Trial and Appeal Board.

The gum maker launched its Swerve flavor in July 2011, and a few months later Swerve IP sent it a cease and desist letter, which prompted Wrigley to file its declaratory judgment complaint after settlement talks arising from the TTAB proceeding failed.
Testimony given so far reflects a concern that Swerve gum's flooding the market would undermine the sweetener's independent reputation for being all-natural, the judge said. Such a fear implicitly reflects the assumption that the customer would connect the brands, consistent with a reverse confusion theory, he ruled.

From the consumer's perspective, the Swerve trademark is arbitrary as to the sweetener but suggestive as to the gum, and so is therefore protectable, Judge Leinenweber said.
It appears that other manufacturers, and even Wrigley in the 1980s, have co-branded gum and candy products with sweeteners, according to the judge. Accordingly, the public may well believe that Swerve sweetener has somehow become affiliated with sugar-free Swerve gum, he said.

Wright Medical Accused Of Stealing Stryker Knee Implant Name

September 28, 2012,

knee replacement.jpgSan Diego - Medical device maker Stryker Corp. filed a trademark infringement lawsuit against rival Wright Medical Technology Inc. in New Jersey federal court Thursday alleging Wright is misusing the name for Stryker's latest knee replacement implant to draw people to its own products.

Wright is operating a website that uses the knee implant name trademark to bring attention to its own unrelated knee implant devices, according to Stryker.
Stryker has developed a knee implant and accompanying promotional campaign based on the name "GetAroundKnee," according to the complaint. The company filed trademark applications for the phrase with the U.S. Patent and Trademark Office in December, January and March, all of which remain pending.

The GetAroundKnee campaign launched in February, involving a "massive print advertising effort" beginning in April which continues to be distributed within the orthopedic community and the public at large, Stryker says.

Stryker also invested significant time and money in a series of television commercials beginning in May to promote its "circular motion" knee concept, featuring the GetAroundKnee trademark, and maintains a website featuring the name, The company claims its promotional campaign is likely to be among the most ambitious direct-to-patient advertising and education efforts ever undertaken by an orthopedic device maker.

Long after that ad campaign was in full swing, Wright registered the domain name The accompanying website features little information about Wright's knee implants, according to Stryker.

A Google search for the term GetAroundKnee yields three paid placement ad results, the first of which is Stryker's ad but the very next of which is Wright's ad, using the trademark tagline as a caption and link to its own website, Stryker says. It claims similar results can be found using other search engines like Bing or Yahoo! as well.

Wright has no permission to use the GetAroundKnee trademark in any manner, and has no affiliation, association or sponsorship with respect to the trademark, Stryker says.
"Defendants have acted deliberately in an ongoing attempt to cause substantial and irreparable damage to plaintiffs' business and to confuse consumers as to the source or sponsor of the websites, services and owner of the GetAroundKnee mark," the complaint says."

Johnny Love Vodka Fails To Stop Jim Beam From Using Lips Trademark

September 26, 2012,

vodka-russia.jpgSan Diego - A vodka maker on Tuesday lost its bid to bar Beam Inc., which makes Jim Beam bourbon and other spirits, from using a lip print design on its flavored Pucker Vodka bottles that the vodka maker claims is too similar to its own trademark.
The preliminary injunction sought by JL Beverage Co. LLC, which makes Johnny Love Vodka, cannot be granted because the trademarks at issue are not similar enough, a Nevada federal judge ruled.

"Just like snowflakes and fingerprints, no two lip prints are the same," Judge Miranda M. Du said. "And as with snowflakes, fingerprints, and human lips, the trademarks in this case are not so similar as to create consumer confusion."

The Johnny Love line of vodkas was created by bartender Johnny Metheny around 2003. At the time, Metheny owned several California restaurants and bars, most operating under the "Johnny Love" name. Inspired by the possibility of making money in the beverage business, Metheny said he set out to make a "better flavored vodka."
As part of this endeavor, one of Metheny's friends designed the lips image used on his vodka logo. In his declaration, Metheny stated that he chose to brand his vodka with lips because lips are "definitely sexy," but also "to impart flavor" by coloring the lips to denote the flavor within the bottle of vodka.

JL has used two trademarks featuring the lips image since July 2005, one of which has been registered with the U.S. Patent and Trademark Office since August 2006 and the other since October 2011.

Metheny sold the Johnny Love vodkas to Thomas Diab, JL Beverage's current president, in 2005. JL Beverage asserts that the company has spent considerable time, effort, money, and other resources developing and promoting vodkas bearing its two trademarks.

In the spring of 2010 Beam wanted to redesign and rebrand its Pucker vodkas in order to extend to brand into flavored vodka, and had an outside design firm put together a new label that contains a prominent image of a pair of lips, varying by color depending on the vodka flavor like Johnny Love Vodka. The new Pucker Vodka launched in the spring of 2011.

Beam attempted to register its lips design as a trademark with the PTO in March 2011, but an official in its legal department later learned that the lips were stock art from iStockphoto LP, and while it had a license to use the lips, it could not claim ownership. As a result, Beam withdrew its application.

Beam adopted the lips mark despite the fact that a Beam employee knew that JL Beverage uses lips trademarks in connection with its line of vodkas, according to JL.
But JL Beverage tried to define the relevant market for similar goods too narrowly, according to the judge. The fact that lips symbols are a prominent feature of several other alcohol products weakens the Johnny Love trademark, she said.

Chipotle Accuses Jack In The Box Of Misusing Trademark Name

September 25, 2012,

cheeseburger.jpgSan Diego - Chipotle Mexican Grill Inc. sued Jack in the Box Inc. for trademark infringement in Colorado federal court Friday, alleging the rival fast food chain stole the Chipotle name to sell chicken.

Jack in the Box has ignored Chipotle's previous demands to stop using the Chipotle trademark forever, and will not acknowledge that it is infringing the trademark, according to Chipotle's complaint.

Jack in the Box has been advertising its new Chipotle Chicken Club Combo under the Chipotle trademark, in a single line set apart from other words and phrases, and in a nearly identical font and similar color to Chipotle's trademarked red, Chipotle says.
The chain also uses a slight variation of the Chipotle trademark, "Chipotload," in a nearly identical font in various other ads for the Chipotle Chicken Club Combo. Jack in the Box uses both infringing terms in ads with no other source-identifying mark, indicating to the average consumer that the ad is associated with Chipotle, according to Chipotle.

As evidence, Chipotle pointed to a tweet from the official Jack in the Box Twitter account saying, "Introducing my Chipotle Chicken Club Combo. It comes with fries, a drink and a Chipotload of flavor."

When Chipotle wrote to Jack in the Box after noticing the unauthorized use of its trademark and demanding that its rival stop using the name Chipotle, Jack in the Box responded by saying its use of the word does not infringe Chipotle's trademark.
Jack in the Box also stated in its response that it does not currently plan any future use of "Chipotload," but did not agree to never use the mark again.

The company noted that its current use of the name Chipotle was in connection with a limited time offer that had since expired, but asserted that the use did not infringe the trademark and suggested it would use the name again in the future.

"JITB's use of Chipotle in such a prominent position, coupled with JITB's awareness of plaintiff's well-known and famous Chipotle marks, can only be explained by an intention to wrongly profit from and trade off Chipotle's valuable goodwill and reputation in the Chipotle marks," the complaint says.

Martha Stewart, Emeril, HSN Sued Over German Knife Trademark Infringement

September 17, 2012,

knife.jpg San Diego -- Martha Stewart, her company, Home Shopping Network and Emeril Lagasse were sued last week by a German regional chamber of commerce alleging they are promoting knives marked with the German "Solingen" trademark despite the knives' Chinese origin.

The Chamber of Industry and Commerce Wuppertal-Solingen-Remscheid is a German trade association that owns the "certification mark" "Solingen" in connection with high-quality German products, according to its complaint in the Southern District of Florida filed on Sept. 11.

The Solingen trade name dates back to roughly 1853, and represents the finest quality in German cutlery and other German products, the chamber says. Cutlery solid under the Solingen name is manufactured in Solingen, Germany, and the brand name certifies that the goods its name appears on are of a certain origin and comply with very specific high standards of manufacture.

The cutlery includes knives and blades of all kinds and has been made in Solingen for centuries, with its roots in sword and dagger making. Protection under the name Solingen is provided by special legislation in Germany, the Solingen Decree, which requires that goods marked with the brand meet strict conditions.

Under the decree, anyone selling cutlery or related goods that are not made in Solingen must not give the impression to consumers that their products are made there.

Earlier this year the chamber discovered that some types of cutlery products were being distributed through HSN marked with both the Solingen name and the word "China." After an investigation, the chamber determined that the defendants are selling and distributing different types of cutlery bearing counterfeit and infringing uses of the Solingen trademark.

The knives are marked with Emeril's own trademark name, with "Solingen, Germany" marked on one side of the blade and "China" on the other. Martha Stewart Living Omnimedia Inc. is the current owner of the Emeril brand.

"The spurious mark and designation used by defendants in interstate commerce are identical with, or substantially indistinguishable from, the Solingen certification mark," the complaint says.

The infringing products are likely to cause consumer confusion, wrongly trade on the goodwill and reputation of the Solingen mark, and have unjustly enriched their makers and distributors, according to the chamber.

Stewart, Lagasse and the companies have "disparaged and tarnished" the trademark, the complaint says. Moreover, the counterfeit products are of much poorer quality than the genuine article, as customers have complained of knives rusting and breaking in half, it says.

Lagasse in particular is well aware of the sanctity of the Solingen name, having teamed up with German cutlery company Wüsthof Dreizackwerk KG in 2002 to produce a line of co-branded products. Wüsthof is a well-known company with a factory in Solingen, and properly uses the trademark on their premium cutlery, according to the chamber.