San Diego Trademark Attorney® Blog

Ninth Circuit Overturns $60M NuVasive Trademark Infringement Judgement

September 11, 2012,

nuvasive-san-diego.jpg San Diego -- The Ninth Circuit on Monday vacated a $60 million trademark judgment and accompanying injunction against the San Diego-based medical device maker NuVasive Inc. in its battle with rival Neurovision Medical Products Inc. over the rights to the trademark "Neurovision."

The appeals court remanded the case to the Los Angeles district court for a new trial and ordered the action to be reassigned to another district judge, scolding Judge Manuel L. Real, who originally presided over the matter.

"Reassignment is warranted on remand because the district court ignored our precedent, persistently cut off or excluded relevant testimony, and repeatedly instructed the jury incorrectly," the Ninth Circuit said.

"In light of the district court's adherence to a view of trademark law that is at odds with clear Ninth Circuit precedent, there is reason to believe that the district judge may 'have substantial difficulty in putting out of his . . . mind previously expressed views or findings determined to be erroneous,'" the appeals court said.

Following a five-day jury trial to determine the parties' rights in the
trademark Neurovsion, the jury awarded $60 million to NMP. The jury found that NuVasive committed fraud in procuring its trademark registrations, that NMP had prior rights in the mark, and that NuVasive wilfully infringed NMP's rights.

The district court entered judgment for NMP, issued a permanent injunction barring NuVasive from using the mark, awarded NMP attorneys' fees and costs, and ordered cancellation of NuVasive's trademark registrations.

The jury's verdict that NuVasive fraudulently procured trademark registrations for the Neurovision mark must be vacated because the district court erroneously instructed the jury regarding the elements required to prove fraud on the United States Patent and Trademark Office, the Ninth Circuit ruled.

There is no requirement that an applicant for a trademark registration disclose all prior use of a mark, contrary to the district court's instruction, according to the appeals court. Instead, an applicant must disclose only those prior users that the applicant believes have acquired superior rights to the mark in the classification for which registration is sought, it said.

The Ninth Circuit ruled that the district court erroneously instructing the jury to determine only whether NuVasive omitted knowledge of NMP's prior use of the Neurovision mark. The proper inquiry is whether NuVasive wilfully omitted knowledge of a superior right held by NMP, it said.

The district judge also wrongly omitted from the jury instructions a key element of proving fraud on the USPTO: that a trademark applicant intend to induce reliance on a misrepresentation, the Ninth Circuit said.

A new trial is also required because the district court failed to properly instruct the jury as to the showing required to challenge an "incontestable" mark, the appeals court said. The district court instructed the jury to answer only whether NMP established trademark rights in the mark through prior use of the mark in commerce, and failed to require that the jury determine both the geographic scope of NMP's rights and whether NMP maintained continuous use of the mark following the acquisition of any state law rights in the mark, the appeals court noted.

The district court was found to have abused its discretion by excluding relevant evidence based on its legally erroneous determination that any differences in the functions and user bases of the NMP and NuVasive devices were irrelevant to the likelihood of confusion analysis. The district court should have admitted NuVasive's proffered evidence, the Ninth Circuit said.

Ben & Jerry's Sues Porn Producers For Ripping Off Trademarked Ice Cream Names

September 6, 2012,

ice_cream.jpgSan Diego - Ben & Jerry's Homemade Inc. and parent company Unilever launched a lawsuit on Wednesday against the makers of Ben & Cherry's, a series of pornographic films, alleging they are infringing a number of trademarks, including those covering the names of several of the ice cream maker's most popular flavors.

The North Hollywood, California-based Rodax Distributors Inc., which does business as Caballero Video, and its two principals make, market, distribute and sell a series of DVDs containing "exploitative, hardcore" pornographic films, according to Ben & Jerry's' complaint filed in Manhattan federal court.

The Ben & Cherry's movies bear titles similar to iconic, well-known Ben & Jerry's flavors such as New York Super Fudge Chunk, Peanut Butter Cup and Everything But The ..., the complaint says. Ben & Cherry's has produced films entitled New York Super Fat & Chunky, Peanut Butter D-Cups and Everything But The ... Butt.

The movies also feature nearly identical simulations of Ben & Jerry's trademarked logos, the complaint says.

The DVDs are marketed in product packaging featuring simulations, confusingly similar variations or imitations of the Ben & Jerry's product packaging and trade dress, according to the complaint.

Ben & Jerry's says it has averaged nearly $500 million per year in sales for the past three years, which represents millions of gallons of ice cream.

"The extraordinary and longstanding success of plaintiffs' Ben & Jerry's brand products over the past 35 years has fostered wide renown and fame with the trade and public," the complaint says.

Despite being put on notice of Ben & Jerry's' rights in its famous and registered family of trademarks, the defendants willfully diluted and infringed the marks, and continue to do so, according to the complaint.

The use of the infringing materials is likely to cause confusion in the minds of consumers, who might mistakenly believe that the movies are affiliated with Ben & Jerry's, the ice cream maker says. The defendants' behavior is also likely to tarnish the ice cream brand's reputation and undermine or damage the brand's substantial goodwill and reputation, the complaint says.

Ben & Jerry's is not a complete stranger itself to lewd ice cream names, as the creator of the trademarked flavor Schweddy Balls.

Gap Settles Kim Kardashian's Old Navy Ad Likeness Suit

August 29, 2012,

old-navy.jpgSan Diego - The Gap Inc. last week put to rest reality television star Kim Kardashian's legal action alleging the company's Old Navy subsidiary ran a television commercial featuring an actress who looks so similar to Kardashian that her rights of publicity were violated.

Judge Dale S. Fischer of the Central District of California dismissed Kardashian's suit on Tuesday, after her counsel told the court on Friday that the parties had struck a settlement deal, without going into any further detail.

Kardashian stars in "Keeping Up With The Kardashians," which her 2011 complaint against the Gap claims to be the most-watched series in the history of its cable channel, E! Entertainment Television. The show has helped her attain "an extraordinary level" of popularity and fame, with over eight million Twitter followers, the complaint notes.

In February 2011 the Gap launched a multimedia advertising campaign to promote its Old Navy apparel and fashion products, allegedly using Kardashian's likeness, identity and persona without her consent, according to the complaint. Kardashian alleged violations of the Lanham Act for unfair competition, as well as California's right of publicity statute.

The Old Navy commercial "Super C-U-T-E" stars model Melissa Molinaro, another reality television personality, who has been featured in "Making the Band 3" and "Pussycat Dolls Present: The Search for the Next Doll." The ad spot is still available to view on YouTube.

In addition to featuring Molinaro as a "celebrity lookalike," the ad incorporated various elements of Kardashian's persona and identity into its visual presentation and storyline, the complaint says.

The commercial immediately received substantial interest and attention from the media and the consuming public, as a direct result of the Gap's use of a Kardashian lookalike, according to the complaint.

The Gap knowingly and intentionally took steps to exacerbate and perpetuate the confusion over whether it really was Kardashian in the commercial, the complaint says.

San Diego Vegan Restaurant Attacks Starbucks Over "Evolution" Trademark

August 23, 2012,

coffee_beans.jpg San Diego - Evolution Fast Foods LLC, operator of a San Diego vegan fast food restaurant, sued Starbucks Corp. and its Evolution Fresh Inc. subsidiary this month for unauthorized use of its trademarked name.

Starbucks has opened restaurants in Washington state under the Evolution Fresh brand name that operate in direct competition with Evolution Fast Foods in the vegan and vegetarian restaurant industry, according to the complaint Evolution Fast Foods filed on August 13.

Beginning in 2009, Evolution Fast Foods was organized as part of a rebranding of an ongoing restaurant called Nature's Express, which served only vegan foods and juices. Evolution Fast Foods manager Mitch C. Wallis holds the trademark rights to the company's name, the complaint says.

The date of first use of the Evolution Fast Food mark was at least as early as April 20, 2010, the company asserts. The mark was registered as a federal trademark as of May 10, 2011 for cafe and restaurant services.

Evolution Fast Food asserts that Juice Harvest Corp. obtained a trademark for "Juice Evolution" in October 1998, and then was issued one for the word mark "Evolution" and a related logo in April 2010, pertaining to fruit and vegetable drinks and juices.

Juice Harvest then assigned all rights to its trademarks to Evolution Fresh in May 2010, and Starbucks bought Evolution Fresh in November 2011, the complaint says. News reports placed the purchase price at $30 million.

Starbucks acquired Evolution Fresh to build a nationally recognized brand name in the health and wellness industry, and to that end opened two restaurants under the Evolution Fresh brand name, first in Bellevue, Washington in March and then in Seattle, Washington in July, Evolution Fast Foods says. The pair of restaurants are only the first of many Starbucks plans to open under the Evolution Fresh name, according to Evolution Fast Foods.

When the Bellevue restaurant opened, Starbucks unveiled a new logo bearing the words "Evolution Fresh" that is far different from Evolution Fresh's original "Evolution" mark, and is substantially similar to Evolution Fast Foods' mark, the complaint says. Evolution Fresh filed an application in May for a federal trademark for "Evolution Fresh" as pertaining to restaurants and cafes, it says.

On August 15, two days after Evolution Fast Foods filed its lawsuit, Starbucks announced that it would be building a major new juice factory in Rancho Cucamonga, California to expand the Evolution Fresh line. The company currently operates a juice plant in San Bernardino, California, where Evolution Fresh got its start.

Melrose Jewelers Accused Of Trademark Infringement By Rolex

August 13, 2012,

watch.jpgSan Diego - Rolex announced that it has recently initiated a trademark infringement lawsuit against Melrose Jewelers. After purchasing multiple products from the Los Angeles jeweler, Rolex alleges that the defendant is offering counterfeit products that use the Rolex trademarks without authorization. In its court documents, Rolex claims that Melrose also intentionally created websites to promote, advertise and sell counterfeit watches and parts. Rolex also says that Melrose is using the registered Rolex trademarks to sell its counterfeit products in retail locations, in advertisements and on the Internet. The famous watchmaker claims that it is in no way affiliated with the jewelry store and use of its trademarks is causing consumer confusion and deception. Rolex alleges that Melrose's actions constitute "false designations of origin, false descriptions and unfair competition".

Melrose argues that it only acquires authentic timepieces and parts to sell on its websites and at its retail locations. The jewelry store insists that it only offers the highest quality products and offers up its $10 million revenue from 2011 as proof. Melrose offers other luxury brands for sale including Breitling, Cartier, Tag Heuer and Omega. The popular jeweler claims that it sells pre-owned timepieces and restores previously worn watches, but vehemently insists that it does not include counterfeit products or parts. It also claims that its jewelers conduct thorough inspections of products to ensure that only the best quality watches are offered to its consumers.

Rolex is also alleging that Melrose conducts business through six separate websites that utilize the Rolex trademarks and direct Rolex consumers to Melrose Jeweler websites. The websites include: rolexgiveaway.ca, rolexblogsite.com, rolexblogsite.net, rolexwatchforum.com, rolexwatchforum.net, rolexwatchforums.com, and rolexwatchforums.

Rolex is asking for a court order to prevent Melrose from using its trademarks. It is also seeking a permanent injunction to shut down the websites offering new or previously owned products under the Rolex brand names or utilizing meta tags or keywords incorporating the Rolex trademarks. The luxury watchmaker is seeking $2 million in damages, or up to $100,000 for each domain name Melrose has used. Rolex is also seeking attorney's fees and court costs.

Gucci Wins Trademark Infringement Lawsuit Against Great-Grandsons of Gucci Founder

July 31, 2012,

purse.jpgSan Diego - Most people know that few fights can be as bad as those within the family. Lately Gucci became as well known for its high profile trademark infringement battle against family members as it is for its famous brand. In 2009, the fashion house sued the former wife of one of the grandsons for attempting to open Gucci coffee shops. In 2010, the Gucci Group sued Cosima and Elizabeth Gucci for attempting to open a line of global hotels. And last week, Gucci announced that it was successful in a trademark infringement lawsuit against the great-grandsons of its founder.

Guccio and Alessandro Gucci, great-grandsons of the founder, produced handbags and accessories under the brand name ToBeG. The grandsons had chosen not to use the trademarks on the actual products themselves. However, a judge in Florence nonetheless found the two guilty of infringing on the Gucci trademarks. Despite having created products under its brand name for over four years, the owners of ToBeG, were sued by the Gucci Group for making unauthorized use of the Gucci trademarks in marketing communications and website activities. Consequently, the Florentine court held that using the names "Guccio Gucci" and "Gucci", created an "unfair association" between the Gucci trademarks and the products of ToBeG. Additionally, unauthorized use of the Gucci trademarks created a likelihood of confusion between consumers of the products produced by the two companies. As a result, the court held that the ToBeG products took unfair advantage of the qualities and reputation of the famous brand.

Gucci was founded in Florence Italy in 1921 and quickly became known for making high-quality clothing, watches, jewelry, shoes and leather goods. Both of the great-grandsons began their careers working for Gucci's well-known fashion label. Guccio Gucci (named after his great-grandfather) left Gucci after 12 years to work for his father, and then to set up his own company in 2008.

Stratosphere Owners Sue Online Gaming Company Marchex for Trademark Infringement

July 24, 2012,

slot_machine.jpgSan Diego - Online gambling is a new threat to traditional casinos. But it appears that brick and mortar casinos still hold a degree of control, particularly when it comes to protecting intellectual property. In a battle of the old versus the new, American Casino and Entertainment Properties which owns the Stratosphere recently filed a lawsuit against Marchex Sales Inc., a mobile and online advertising company out of Seattle, Washington.

The lawsuit, filed in District Court in Las Vegas, alleges trademark infringement and asks for an immediate injunction to shut down a website run and presumably owned my Marchex. In addition to trademark infringement, the court documents allege that Marchex was also in the business of cyberquatting. Cybersquatting involves registering a website domain name that is confusingly similar to that of another party's trademark. Then, the cybersquatter uses the site to direct incoming traffic to its own websites or advertising.

In the lawsuit, American Casino alleges that Marchex used a website called aceplay.com, which led consumers to believe they would be offered information about Stratosphere and three other properties owned by American Casino. However, links to the Marchex website produced a number of non-related links for competing hotels and casinos. The same links directed users to online gaming sites, which in turn generated "click-through" revenue to Marchex from online casinos.

American Casino argues that it owns the exclusive rights to use the words "Ace Play" in connection with gaming services because it owns the "ACE PLAY" trademark. Evidently, the District Court Judge hearing the case agreed because it issued a temporary restraining order requiring the immediate removal of the aceplay.com website from the Internet. U.S. District Court Judge Gloria Navarro specified that the domain name was to be placed on a "hold and lock" and immediately transferred to the control of the court. A final decision on the case is expected in the coming months.

Start-Up Drink Company Sued By Under Armour For Trademark Infringement

July 18, 2012,

lime.jpgSan Diego - In a battle worthy of any David versus Goliath story, the makers of Bodyarmor SuperDrink, are being sued by popular sports apparel company Under Armour. The lawsuit, filed in United States District Court for the District of Maryland, alleges that the name of the new beverage line by Bodyarmor is confusingly similar to the Under Armour trademarks.

In response to the lawsuit, the drink manufacturer filed its answer to the claim last week. Bodyarmor SuperDrink chairman Michael Repole claims that his company has the resources and expertise to fight the lawsuit against Under Armour to the fullest extent possible. Repole also hopes that Bodyarmor can set a positive example for small companies that are harassed by larger companies hoping to bully competitors into submission. In further response to the lawsuit, Bodyarmor commissioned a scientific consumer perception survey to conclusively demonstrate that its products in no way cause confusion with consumers.

According to Lance Collins, founder and CEO of Bodyarmor SuperDrink, the trademark infringement lawsuit by Under Armour came as a surprise. Bodyarmor registered its trademark with the United States Patent and Trademark Office with no objection from Under Armour. Then, almost five years after the trademark application was filed, Under Armour decided to pursue a lawsuit to alleging that Bodyarmor's new products cause confusion with Under Armour's trademarks. He argues that the products manufactured by both companies are distinctly unrelated and share no branding similarities. As such, representatives for Bodyarmor claim that the company is baffled as to why a large multi-national corporation would decided to pursue such a meritless lawsuit against a small start-up company with a distinctly different product specialty.

Lance Collins created FUZE Beverages and NOS Energy Drink. Both were sold to Coca-Cola in 2007. Michael Repole is the co-founder and former president of Vitaminwater, which was also sold to Coca-Cola in 2007. Their new product Bodyarmor Superdrink, is a proprietary blend of nutrients that allegedly contains superior nutrition, excellent hydration and delicious taste. The energy drink comes in 7 fruit and tea flavors and was voted Best Functional Beverage of 2011 by BevNet.com.

Heart Attack Sandwich Doesn't Die Due To Trademark Infringement

July 9, 2012,

cheeseburger.jpgSan Diego - While most restaurants seem to be moving more toward healthier foods, other restaurants are going in a decidedly different direction. Look no further than the Heart Attack Grill in Las Vegas. Recently a U.S. District Judge in New York ruled that a deli there can continue to use the phrase "Instant Heart Attack Sandwich" as described on its restaurant menu despite the Las Vegas eatery's use of a similar name.

The Heart Attack Grill, an off-beat medically themed restaurant located in Las Vegas, has a menu that includes items such as "Fat Bastard Wines", "ButterFat" milkshakes and "Flatliner" fries cooked in lard. The restaurant also displays the slogan "Heart Attack Grill. Taste Worth Dying For!" and "Fight Anorexia". The servers at Heart Attack Grill are dressed in nurse and doctors uniforms and will serve a person weighing over 350 lbs. all they can eat, for free. The restaurant has received a ton of publicity for someone actually having a heart attack in the restaurant. However, despite its critics, the restaurant is using trademarks such as 'Single Bypass Burger" and 'Double Bypass Burger' which it claims a New York deli is infringing on.

On March 29, 2011 Second Avenue Deli, located in Lower Manhattan, received a cease-and-desist letter demanding that it stop serving its Instant Heart Attach Sandwich and the Triple Bypass Sandwich. The letter originated from the accusation that the deli was infringing on the trademark for 'Bypass Burgers' which is currently in use by the Heart Attack Grill. About a month after receiving the letter, the Deli filed a lawsuit in New York asking the court to rule that it was not infringing on the restaurant's trademarks.

A little more than a year later U.S. District Judge Paul A. Engelmayer described the dispute as "restaurants that use provocative names to market their extravagantly caloric food". The judge ruled that the New York deli can continue to sell its Instant Heart Attack Sandwich and promote it on the menu and on the internet. As for the Triple Bypass Sandwich however, it can only be used by the deli only on its menu. The judge also advised, "In the event that future quarrels arise, the court strongly encourages the parties to eschew provocative cease-and-desist letters or precipitous lawsuits, and instead to work together to try to resolve their differences cooperatively."

The Heart attack Grill's attorney, Darren Spielman, stated, "The Court confirms that the Heart Attack Grill will continue to have unbridled use of its trademarks throughout the entire United States" and "Heart Attack Grill will continue to enforce its intellectual property rights against those who would seek to copy or trade off the longstanding goodwill that has accrued."

NBA Player Anthony Davis Register's Monobrow Trademarks With USPTO

July 2, 2012,

basketball.jpgSan Diego - It has been a banner year for sport's stars and their trademarked catchphrases. Witnessing the popularity of trademark licensing and the tremendous opportunity to profit from marketing products with trademarked names and phrases, it seems that athletes are scrambling to find the latest popular catchphrase to trademark.

Jeremy Lin filed for Linsanity, Tim Tebow filed for Tebowing, Bryce Harper filed for "That's a Clown Question, Brow", and now basketball phenom Anthony Davis has filed for "Fear the Brow" and "Raise the Brow" for trademark protection with the United States Patent and Trademark Office. Davis stated that he filed the trademark applications to ensure that no other parties would profit from the feature that has made him instantly recognizable. And although most people would not consider the possession of a uni-brow a positive attribute, the basketball star insists that it is one of his best features and he intends to profit from it.

In addition to the profits for Davis and his family from the uni-brow trend, Anthony Davis is riding a wave of popularity since he was drafted last Thursday. Known as much for his connected eyebrows as his on-the-court abilities, Davis was celebrated with top selling t-shirts sold during Wildcat games that read, "Fear the Brow".

Among his accomplishments, Davis garnered countless awards, led Kentucky to an undefeated 2011-2012 season, helped his team win the 2012 NCAA Basketball Championship and won the NCAA Tournament Outstanding Player award. The power forward and center played just one year with the Kentucky Wildcats before announcing plans to forego the remainder of his college career and become a professional.

Considering the risks and rewards, fans, coaches and sports analysts were surprised by the move. However, given the tremendous momentum of Davis' career thus far, most experts anticipate a smooth transition from college to professional player. And as a first round pick by the New Orleans Hornets, the start of the rookie's first year is highly anticipated. No information has been released yet about potential manufacturers of apparel or sports memorabilia, but given the spectacular rise to fame of the young basketball star, it is likely that the eyebrow trend will prompt successful sales of fan gear.

ZO Skin Health Files Trademark Infringement Lawsuits

June 26, 2012,

labtesting-molecule.jpgSan Diego - This entry has been moved. To read the entry see: Orange County Trademark Attorney

San Diego Based KONY 2012 Campaign Creators Threaten Lawsuit For Infringing on Trademarks

June 25, 2012,

target_aim.jpgSan Diego - The creators of the now infamous KONY 2012 YouTube video seen around the world more than 90 million times has recently threatened the owners of Kickstriker.com with a lawsuit for infringing on multiple of its trademarks.

The KONY 2012 phenomenon as seen on Facebook, YouTube, and posters throughout the United States tugged at the heart strings of people everywhere as the creators of the video aimed to capture Joseph Kony, leader of the Lord's Resistance Army (LRA) in Uganda. It has been estimated that Joseph Kony and the LRA are responsible for abducting more than 30,000 children and forcing them to murder other innocent people. The movement is also referred to as the 'Invisible Children' and supporters are able to make donations towards the cause on its website to capture Kony.

Kickstriker.com, a new website, has recently posted a video parodying KONY 2012. The website is run by three graduate students Josh Begley, Mehan Jayasuriya and James Borda who are currently enrolled in New York University's Interactive Telecommunications Program. On the website, visitors are able to donate money to the KONY 2012 campaign to "hire mercenaries to hunt down Kony". The students use dark humor as a satire on military issues around the world even promising that if a donation of over $5,000 is made the person donating will receive one of Kony's teeth to commemorate their role in ending his reign of terror." The website does disclaim however that "Kickstriker is a hoax."

The Invisible Children campaign creators did not find Kickstriker's humor amusing, whatsoever. In fact, a cease and desist letter was sent to the creators of Kickstriker demanding that the use of the trademarks 'KONY 2012' and 'Invisible Children' be removed and stated "this impermissible use is a blatant and egregious infringement of Invisible Children's valuable copyright and trademark rights."

The makers of Kickstriker are enforcing their right to freedom of speech and say that they are not infringing on the trademarks. A statement from the company was made saying, "The purpose of our website, Kickstriker.com (henceforth 'Kickstriker'), is to critique a number of institutions, including Invisible Children, through the use of political satire," and "as such, while Kickstriker makes use of the trademarked terms 'Invisible Children' and 'KONY 2012,' these uses are protected under the doctrine of fair use, which allows for such uses for the purposes of criticism and commentary."

This is not the first time that San Diego based Invisible Children has been surrounded by controversy. Recently the director of the KONY 2012 video and co-creator of the campaign Jason Russell was video-taped standing naked in the streets of San Diego cussing and shouting to nearby street traffic. Russell was detained and treated for dehydration.

Hopefully, the original message of the campaign will prevail, Joseph Kony will be captured, and there will be invisible children no more.

Urban Outfitters Sued For Trademark Infringement By Navajo Nation

June 15, 2012,

indian_pow_wow.jpgSan Diego - In an interesting twist on traditional trademark infringement cases, the Navajo Nation has recently initiated a lawsuit against popular clothing purveyor Urban Outfitters. Filed in district court in New Mexico, the case alleges trademark infringement, as well as violations of the federal Indian Arts and Crafts Act. The federal Indian Arts and Crafts act is rarely seen in court, but makes it illegal for companies or individuals to sell arts and crafts in a way that would falsely suggest the products were made by Native Americans. The lawsuit seeks monetary damages and an injunction to prevent Urban Outfitters from using the Navajo name or other variations on its products.

A representative for the Navajo Nation emphatically states that the Native American tribe has no connection with Urban Outfitters, and considers the infringement violations "derogatory and scandalous." Urban Outfitters stirred up tremendous controversy when it introduced its Native American inspired line of products, which included Navajo underwear and liquor flasks. In light of the fact that the sale and consumption of alcohol is banned on the Navajo Reservation, the production and sale of the liquor flasks was particularly offensive.

Initially, the Navajo Nation sent a cease and desist letter, which compelled the retailer to remove the offending product names from its website. However, the Navajo Nation claims that the products are still being distributed through other brands owned by Urban Outfitters, as well as catalogs and retail outlets. The Philadelphia based company has stated that it has no plans to further alter its products and claims that its designs are inspired by current trends used industry wide. Urban Outfitters and other retailers have since replaced the Navajo name with the word "printed" or alternate spellings of Navajo. The Navajo Nation also disputes such items as traditionally styled beaded earrings and hacienda bags. Such products do not carry the Navajo trademarked names, but nonetheless remain demonstrative of patterns that have long been used in traditional Native American artwork and designs.

The Navajo Nation considers it's branding and trademarks some of its most valuable assets and vows to protect them to the fullest extent of the law. There are approximately 10 trademarks currently registered by the Navajo Nation including those for clothing, footwear, online retail sales, household products and textiles. Recently, the tribe forced a French company to stop using the name, "Navaho" because it was confusingly similar to the correct spelling of its tribal name.

Gucci Wins Trademark Battle Against Guess

June 11, 2012,

purse.jpgSan Diego - The fashion industry has long been rife with unauthorized copying of designs, logos and fabrics. Quite simply, it's much cheaper and easier to copy successful designs than to create new ones from scratch. Moreover, new designs come out so frequently that designers ignore most knock-off copies of their products. Lawsuits are often time-consuming and expensive. While it can be difficult for a company to copyright a design, a company can register elements of a design as a trademark. For example, the shape of a bag's flap, patterns on fabric, fabric closures or the look and feel of a strap can be registered for trademark protection with the USPTO.

Despite the prevalence of copies and the difficulty prosecuting knock-off designs, there have been a number of high profile fashion houses that have bucked the trend and taken competitors to court to protect distinctive designs. Luxury shoe designer Christian Louboutin took its rival Yves Saint Laurent to court to protect its famous red-soled shoe, Hermes sued a retailer that sold a transparent rubber version of its Birkin Bag, and most recently, Gucci took Guess to court over unauthorized use of its four distinctive logo designs.

Though the lawsuit was initiated over three years ago, a federal judge recently handed down a decision that awarded monetary damages for the unauthorized copy of design elements by Guess and its footwear licensee, Marc Fisher. Gucci was also granted an injunction to prevent the use of three of four well-known "Square G" trademarks named in the original lawsuit. The trademarks listed in the lawsuit were the green and red stripe, the interlocking "G" pattern, the square "G" and the brand name's delicate script font . In its original pleadings the Italian company asked for $120 million dollars in damages, claiming Guess's appropriation of its logos diluted its brand, confused customers and caused it to lose profits.

The case, decided in U.S. District Court in the Southern District of New York, primarily hinged on the use of the interlocking "G" logo on Guess handbags. The luxury design label argued that some of the Guess designs were too similar to its own to be anything less than "studied imitations". Gucci also objected to the use of its recognizable brown and beige material and design elements such as the distinctive green-red-green stripe. The $4.66 million dollar award against the Los Angeles based company, represented the profit made by all products utilizing the unauthorized logo. Despite its win, Gucci claimed that the damages awarded represent only a tiny slice of the money obtained from the wallets, belts, shoes and other items designed to mimimic it's designs. However, Judge Shira Scheindlin held that Gucci was not entitled to further damages reflecting lost sales or harm to its brand, calling its analysis for computing damages "highly speculative."

USPTO Grants Trademark Ownership of "Linsanity" to Jeremy Lin

June 5, 2012,

basketball.jpgSan Diego - The United States Patent and Trademark Office (USPTO) issued office actions recently showing that it will register the term "Linsanity" to NBA player Jeremy Lin. The catchphrase had become the source of much talk and argument in the last year. With the meteoric rise of the young player from undrafted nobody, to starter with the New York Knicks, Lin gave the fans the chance to cheer for something different and unique. However, clearly there were other people who had aspirations of capitalizing on the newest NBA catchphrase. Lin's filing came six days after a filing by a California man in early February, as well as additional filings by unrelated individuals on February 9th and 14th.

The USPTO typically grants trademark rights to users who file first. However, due to the fact that the LINSANITY trademark contains Lin's name and is a clear reference to him, the USPTO has rejected the applications filed by persons other than Jeremy Lin.

Jeremy Lin is a California native who went to Harvard University and managed to garner a contract with the Golden State Warriors after graduating in 2010. Despite not having had a scholarship or any draft prospects after graduation, Lin achieved success against all odds.

One of just a few Asian Americans in the NBA, Lin seldom saw any court time and was assigned to the NBA Development League three times in his rookie season. He was later waived by the Warriors, and then the Houston Rockets, before being picked up by a third team, the New York Knicks. Lin joined the Knicks for the 2011-2012 season, and despite playing in the Development League for a good portion of the season, ended up leading the Knicks to a surprising winning streak at the end of the season. The subsequent global following has been labeled "Linsanity" by fans and has generated much talk in the last year.

The use of trademarked terms and catchphrases in professional sports has long been a huge moneymaker for owners, players and purveyors of sporting goods. Lin's status on the court may be questionable next year, but he is still a huge draw with fans. And with the global success of Lin's shoes, jerseys, fan gear and ticket sales, "Linsanity" will undoubtedly continue, at least for a little while longer.