San Diego Trademark Attorney - San Diego Trademark Lawyer

San Diego - In a David vs. Goliath trademark dispute, Princeton Vanguard, the manufacturer and marketer of the Pretzel Crisps brand flattened pretzel snacks, is having its trademark challenged by snack-food giant Frito-Lay. The Plano, Texas-based Frito-Lay is arguing to the United States Patent and Trademark Office that the "Pretzel Crisps" trademark is too generic to hold a trademark registration.

What began as a small family-owned business making funnel cakes for state fairs, Princeton Vanguard had its first national hit with its New York Style Bagel Chips, which are bagged, sliced, toasted bagel pieces. In 2004, armed with a United States patent for a flat pretzel cracker, Princeton Vanguard launched its Pretzel Crisps brand. The brand is available in a variety of flavors and can be found at grocery retailers nationwide.

According to a market research company in Chicago, Pretzel Crisps are the sixth-most popular snack food in the snack market. Unable to successfully market its own version of flattened, crispy pretzels through its Rold Gold Pretzel brand, Frito-Lay has now moved on to challenge the "Pretzel Crisps" trademark registration.

Princeton Vanguard will likely have some difficulties defending its descriptive trademark. With trademarks rated according to how distinctive they are, "Pretzel Crisps" may be considered to literal and descriptive for the crisp, flattened pretzels it represents. Fanciful or inherently distinctive and arbitrary trademarks have the greatest chances of sustaining a trademark registration because they carry no particular connection with their products.

Descriptive trademarks are valuable to companies because they are useful at demonstrating to consumers what they are actually buying. Descriptive trademarks also tend to rank higher in Internet searches for products in their categories. The problem with these types of trademarks however, is that in order to sustain a registration, the owner often must show that it has created "secondary meaning" in the marketplace. Consumers must be able to associate it with the source of goods, and not only the product class.

Even if its "Pretzel Crisps" trademark is refused by the USPTO, Princeton Vanguard may still continue to use the trademark. If the trademark eventully garners enough recognition as a brand, Princeton Vanguard could then re-apply for the trademark.

San Diego - Communications provider Cricket Wireless has recently won a trademark infringement and false advertising lawsuit against ABC Wireless Choice, a wireless communications provider in Chicago. The San Diego trademark attorney representing Cricket announced that his client has been awarded a permanent injunction and all attorneys' fees in the case.

According to federal trademark law, the courts may award injunctive relief if there is evidence that the defendant has mislead consumers by falsely implying a connection to the plaintiff, confusing buyers as to the source of its goods and services. In "exceptional" cases, in which the defendant is found to have acted maliciously, fraudulently, willfully, or deliberately, the courts may award attorneys' fees to the plaintiff.

In its trademark infringement complaint against ABC Wireless Choice, Cricket was victorious on all counts and was also able to prove the variables for an "exceptional case," thus receiving the award for attorneys' fees.

According to the complaint, ABC Wireless Choice infringed on the Cricket Wireless trademark and blatantly implied it was somehow connected to the San Diego provider by displaying the Cricket trademark and logo on its signs and banners. ABC was not offering any Cricket Wireless products or services for sale, however its attempts to lure potential Cricket customers to its stores to purchase its competing telecommunications goods and services were intentional. Upon investigation by Cricket Wireless representatives, ABC was found to have engaged in activities that were unlawful and described as a "bait and switch" scam at the expense of Cricket and its customers.

In addition to these findings, ABC Wireless choice reportedly threatened Cricket Wireless employees and repeatedly attempted to evade service of process, the procedure that would give it legal notice of Cricket's complaint.

Founded in 1999, Cricket Wireless provides wireless communications service to seven million customers in the United States. Cricket is a subsidiary company of Leap Wireless, which owns and operates the seventh largest wireless communications network in the country, utilizing its CDMA 1X and 1xEV-DO networks.

No comment was available from either party on the court's verdict.

San Diego - A federal appeals court will hear arguments in a trademark infringement battle between sports artist Daniel Moore and the University of Alabama, whose football program is portrayed in a number of his works. The two parties will present their cases to the United States Eleventh Circuit Court of Appeals in Atlanta later this week.

The trademark infringement dispute began back in 2005 when the university sued Moore for allegedly violating trademark law after he had painted scenes from football games depicting Crimson Tide players in their crimson and white football uniforms without the authorization of the University. The University of Alabama's complaint also contends that Moore reissued previously licensed prints of the football players without paying any royalties to the University, located in Tuscaloosa.

Both parties appealed their cases after a judge's ruling in 2009 found that Moore's paintings and prints were protected under trademark law but that other items, such as coffee mugs, weren't. United States District Court Judge Robert Propst ruled that Moore's artwork depicted on mugs, T-shirts, and other merchandise did indeed infringe on the University's trademark.

The Birmingham-based artist stated that the items covered in Judge Propst's ruling are "incidental items" that are a very small part of his business in terms of revenue. He added that he was pleased with the judge's ruling that his paintings and large prints have not, do not, and will not infringe on the University's trademark, because those are the "meat and potatoes" of his business.

In his defense, Moore denied violating trademark laws and maintained that his artwork constitutes free speech under the United States Constitution. "The University of Alabama believes the court ruled correctly when it found that Daniel Moore and his company engaged in activities that infringe on the University's trademarks," commented University spokeswoman Deborah Lane. "While we regret the necessity of having to involve the courts in this matter, the lawsuit was necessary since the University of Alabama must protect the value and reputation of our trademarks, name, colors, indicia, and logos, by determining who uses them, as well as when and how they are used."

Moore's paintings and prints illustrate some of the more pivotal moments in Alabama sports history, including "The Goal Line Stand" from the 1979 Sugar Bowl game against Penn State. His latest work of art is reportedly going to depict "The Shoutout" from last season's national championship win over LSU.

San Diego - A state Supreme Court in Arkansas is refusing to toss out a Little Rock marketing firm's trademark infringement lawsuit in which it is seeking exclusive rights to certain Arkansas state-related lottery phrases it claims it used before Arkansas ever had a lottery.

In a 4-3 decision, the divided Supreme Court dismissed the Arkansas Lottery Commission's appeal of a circuit judge's ruling which denied its motion for summary judgment in the trademark infringement complaint filed by Alpha Marketing. Throughout the case, the Commission has argued that it is exempt from civil suits, however Circuit Judge Wendell Griffen never addressed that issue in his ruling.

Alpha Marketing reportedly filed its complaint against the Lottery Commission after its owner Ed Dozier was informed by the state attorney general's office that he would be sued if his company continued to use the lottery-related phrases, which have appeared on merchandise such as T-shirts. United States Patent and Trademark Office (USPTO) records indicate that Alpha Marketing registered the lottery-related trademarks as early as 1994, however the state of Arkansas did not have an official lottery until 2009.

In its lawsuit, Alpha Marketing is seeking a decision from the state Supreme Court that it has exclusive trademark rights to the phrases, "Arkansas lottery," "Arkansas Lotto," and "Lottery Arkansas."

During its arguments heard before the Arkansas Supreme Court last month, a trademark lawyer representing the attorney general's office argued that the Lottery Commission has sovereign immunity since it is run as a state agency and therefore exempt from lawsuits. This argument was countered by Alpha Marketing attorneys who insisted that the sovereign immunity defense does not apply because the state lottery is operated as a for-profit business.

The majority ruling from the Supreme Court wrote that it could not consider the sovereign immunity defense without a ruling from the lower-court that specifically addresses it. Although it dismissed the appeal, the Supreme Court did say that the Lottery Commission could return after obtaining a ruling from the circuit judge on the issue of sovereign immunity.

State Supreme Court Justice Robert Brown wrote in his opinion, "In my judgment, it is the obligation of this court to facilitate trials through our procedures, not impede them. By requiring additional magic words from the circuit judge, which would amount to surplusage in light of the judge's clear decision, and by discounting his actions, this court has endorsed a trap for the unwary in the practice of law."

San Diego - After intense media buzz surrounding the birth of Blue Ivy, the daughter of rap/hip hop stars Jay-Z and Beyonce, a New York City clothing designer is seeking to capitalize on baby Blue Ivy Carter's name by filing a trademark application with the United States Patent and Trademark Office (USPTO).

According to USPTO records, Joseph Mbeh is seeking to trademark "Blue Ivy Carter NYC" so he can stamp it on a variety of children's clothing. Mbeh's application covers "infant, toddler, and junior clothing" including dresses, skirts, sleepwear, undergarments, boots, shoes, and athletic footwear. In his filing with the USPTO, Mbeh claims that he began using the "Blue Ivy Carter" name as early as January 9, just two days after the child was born at Lenox Hill Hospital in Manhattan.

The application appears domed to fail however, because a trademark application which includes a person's name must include the written consent of that person. In this case, Mbeh apparently has no such consent from the baby's A-list parents. Without written consent, the application will be refused registration. Even with consent the application would fail because a prior registration exists for BLUE IVY used in relation to retail apparel.

Mbeh, a Cameroon native and former Phat Farm intern, is co-owner of Fourfront, which is described as a "street contemporary-couture brand" based out of Manhattan's Garment District. According to Mbeh, his firm's apparel has been worn by celebrities such as rapper T-Pain and Ray J, who is the brother of television actress and R&B singer Brandy.

The application to trademark the child's name comes in the midst of reports that a new type of marijuana has been named after Blue Ivy. The attention surrounding the unique moniker is also on the heels of reports that the couple had diva-like demands during their hospital stay and paid $1.3 million to have an entire floor of the hospital to themselves.

Beyonce, whose formal name is Beyonce Giselle Knowles, rose to fame in the late 1990's as lead singer of R&B girl group Destiny's Child, one of the top-selling female groups of all time. In 2008, Beyonce married rapper Jay-Z after years of speculation of whether or not the couple was actually involved with each other. Jay-Z, born Shawn Corey Carter, grew up in a housing project in Brooklyn and in his music has rapped about being involved with selling crack cocaine during his youth. The rapper has gone on to become one of the most successful rap artists and entrepreneurs in America, having a net worth close to $500 million.

No comment was available from the child's parents. With the popularity of both music stars and the creativeness of their child's name, it is not surprising that someone would jump on the opportunity to capitalize on a trademark.

San Diego - Anheuser-Busch InBev (A-B InBev), the world's largest brewer, has purchased the trademark rights to the Budweiser Beer brand in Europe from a small Czech brewer. This is a small step forward for A-B InBev in a long-running litigation over the hotly contested Budweiser brand.

In its quest for global control of the Budweiser brand, American A-B InBev purchased one of two brewers in the Czech town of Ceske Budejovice, which translates to "Budweis" in the German language. Its purchase of the Bedejovicky Mestansky Pivovar brewer and its 'Budweiser' brand, means that A-B InBev can tighten its grip on the 'Budweiser' trademark, thus ending a century-old battle for the well-known beer.

The other brewery in Ceske Budejovice, known as the Budvar brewer, whose beers are distributed in Ireland, is still claiming use of the Bud name and trademark but will likely look for a buyer in the coming years. Budvar is proudly owned by the Czechoslovakian government, which increased its exports of Budweiser in the 1970's, thus fueling the ongoing trademark dispute even more.

The Czech government has been rumored to be considering selling off its prized assets like the Budvar brewery through a public stock flotation, where A-B InBev would likely purchase a large stake.

No information was available as to A-B InBev's purchase price of the Bedejovicky Mestansky Pivovar's rights to the Budweiser trademarks, however its parent company reportedly transferred the actual brewery and its employees to a different firm prior to the sale.

A big reason for InBev purchasing Anheuser-Busch three years ago was to put itself in the position to acquire global dominance of the Budweiser brand. The American brewer stepped up its exports to Russia and Brazil and is investing heavily in World Cup soccer sponsorships in order to increase its name recognition with beer drinkers all over the world.

The Budweiser trademark dispute dates back more than one hundred years, with all three breweries claiming historical rights to the famous brand and trademark. Since the 1970's the beer companies have fought legal battles in several different countries as both Anheuser-Busch and Budvar increased their exports of Budweiser to other countries. Today, Budvar seems to have beer dominance in Eastern and Central Europe, Germany, and France, while Anheuser-Busch has been more successful in the United States, Latin America, Asia, and southern Europe.

No word on how residents of the small town in the largest beer drinking per capita country feel about the purchase.

San Diego - The Denver Broncos' elation over beating the Pittsburgh Steelers in Sunday night's wildcard playoff game may be short lived. Soon after the event aired on national television, trademark attorneys for Texas A&M University threw up a flag alleging trademark infringement.

During Sunday night's broadcast, a man parachuted into the stadium with a banner that read "12th Man," which flew throughout the rest of the game. Football rules allow for a maximum of 11 players per team on the field at any given time. The "12th Man" phrase is used to indicate the important role played by the fans and was used to rally the crowd.

However, it appears that the "12th Man" phrase is known to be synonymous with the Texas A&M football team and in fact, has been trademarked by the university. Texas A&M Vice President for marketing and communications, Jason Cook, explained, "We take the protection of our trademarks very seriously. They are part of our intellectual property at the institution." Cook went on to say that the university, based in College Station, will defend the trademark against any infringements.

The "12th Man" phrase garnered attention with football fans after a 1922 incident, when E. King Gill, a former player, was called from the stands and suited up in the event he was needed to take the field for the injury-ridden Aggies. Thus, the famous phrase was born, and a statue honoring Gill stands outside the Aggies' Kyle Field.

This is not the first time Texas A&M has gone after an NFL team for using its trademarked phrase. In 2006, a "12th Man" trademark infringement dispute between the university and the Seattle Seahawks was settled through an agreement that would allow the Seahawks to license the trademark from the Aggies. Any time the Seahawks use the "12th Man" phrase at its televised games, the agreement requires the team to include a statement in its broadcasts that the trademark is owned by Texas A&M.

University officials stated that the licensing agreement with the Seattle Seahawks not only clearly established that it owns the trademark, but also made it even more necessary to monitor the unlicensed usage of the phrase by other NFL teams.

In reference to the university's aggressive defense of the trademark, Cook replied, "The 12th Man is extremely loyal. The 12th Man is standing ready to serve, and it's part of our DNA at Texas A&M."

Cook said that the university is hopeful that the infringement was an oversight by the Broncos and can be remedied by educating the team on trademark laws, however, he added, a cease and desist letter could be following close behind.

San Diego - Tilaknagar Industries, Ltd, a leader in the Indian Made Foreign Liquor (IMFL) market, emerged victorious from Bombay, India High Court over a trademark dispute with UTO Nederland B.V..

UTO Nederland B.V., a Dutch exporter of liquor spirits and other alcoholic beverages, had filed a trademark infringement lawsuit against Tilaknagar over its use of the trademarks 'Mansion House' and 'Savoy Club.' On December 22, Nedarland B.V.'s motion to restrain Tilaknagar from using the trademarks was dismissed by the High Court. In the days after announcing the judgment, Tilaknagar's stock rose 2% on the BSE Sensex, Asia's premier stock exchange.

In a statement from Dr. Keshab Nandy, Chief Legal Officer for Tilaknagar Industries, he said, "We are pleased by the judgment passed by the Honorable Bombay High Court, which we believe provides fair justice and validates our stance. However, we are awaiting a copy of the judgment. We have in the past focused immense energies and investments towards the brands 'Mansion House' and 'Savoy Club' and developed them as sustainably successful products in the Indian alcoholic beverage sector. Thus going ahead we remain committed to drive growth and fortify our long standing presence in the industry on the back of a solid business model with strong brands and geographic reach."

Fiscal year sales for 2010-2011 of Tilaknagar's trademarked 'Mansion House' Brandy nearly exceeded six million cases and is expected to grow steadily in the upcoming years. As the second largest selling brandy in the world, Mansion House reportedly remains one of the fastest growing brands in the world. Founded in 1933 by Babasaheb Dahanukar, Tilaknagar was originally a leader in the Indian sugar industry. Due to governmental regulations in the commodities market, Tilaknagar made the transition to the liquor industry in 1973, and quickly became one of India's leading distilleries.

Due mainly to its core competency in the alcoholic beverages sector and its impressive efforts to establish dominance in the market, Tilaknagar Industries has successfully established its distinct identity in the liquor industry. With an uncompromised commitment to providing quality products with a high value for the money, Tilaknagar's brand portfolio consists of unique and diverse brands that are widely enjoyed by consumers worldwide.

San Diego - The City of Nashville, Tennessee, home of the Grand Ole Opry and center of the music industry, has had to make some last minute changes to its annual new year's eve festival in order to avoid a trademark dispute. In the past, the city's Music City New Years Eve Bash has wowed its festive citizens with a large, glowing Gibson guitar dropping as the new year rings in. This year, Nashville will be ringing in the new year with a fifteen-foot music note making the one minute descent.

Apparently, the Hard Rock Café, which has been the sponsor of the bash for the last two years, will not be hosting this year's event in Nashville. Since the Hard Rock owns the trademark rights to Gibson Guitar Drop, the Nashville Convention and Visitors Bureau decided to make the change so it would not be faced with any backlash over using the Hard Rock's trademark. The reason for the Hard Rock pulling out of Nashville's new year's bash was reportedly due to "cost concerns."

Deana Ivey, who works for the Nashville Convention and Visitors Bureau, said that the dropping musical note is more original. So original in fact, that the Convention and Visitors Bureau decided to trademark the name "Music Drop." The chain of musically-themed restaurants known for its rock and roll memorabilia will still be hosting the guitar drops in Memphis, Niagara Falls, and for the first time, St. Louis.

"We don't want to do what other cities are doing. So that was another good reason for us [Nashville] to say we're doing our own thing. We're Music City. We're going to represent ourselves well, and we're making a change," stated Ivey. Back in June 2010, the Hard Rock Café was also host to the Gibson Foundation's Night Out for Nashville, an event to raise money for the city's flood relief fund.

This year's Music City bash, which normally attracts crowds of 30,000, is expecting an even larger turnout. This is mainly due to the announcement of its headliner entertainment, country-rocker Lynyrd Skynyrd, who will play a fifteen-minute version of "Free Bird" while the crowd watches the Music Note drop.

San Diego - The Atlanta National League Baseball Club, owner of the Atlanta Braves, filed an objection with the United States Patent and Trademark Office to many of the trademark applications filed by The Walt Disney Company ("Disney") over the word "Brave." Disney, in association with Paramount Resources' Pixar Petrolium ("Pixar"), is set to release a 3-D computer animated fantasy movie entitled Brave in 2012. Originally, the movie was titled The Bear and the Bow, but Disney and Pixar changed the name to Brave in March, 2010. After private negotiations broke down this summer between Disney and the Atlanta Braves, the Atlanta Braves filed an objection to Disney's' trademark applications.

The Atlanta Braves do not own a trademark for the singular version of the word, "Brave," only the plural version, "Braves." However, the Atlanta Braves believe that Disney's use of the singular version of "Brave" would damage their plural trademark of "Braves" and cause confusion to their fans. Also, the Atlanta Braves contend that they use the singular version occasionally on merchandise or on television or otherwise, when they refer to a single player on the team as a "Brave."

While the Atlanta Braves argue that Disney's use of the word "Brave" causes confusion, it is difficult to believe anyone could argue that the plot or setting of Disney's movie, Brave, would cause any confusion with anything relating to baseball. The computer animated fantasy movie follows the adventures of Princess Merida in the Scottish Highlands during the 10th Century as she confronts mystical legends, epic battles, and wild beasts. However, a trademark owner has a duty to police and protect any use of its trademark or risk it being considered abandoned. Moreover, it would seem that use of the word "Brave" by both entities on apparel could lead to consumer confusion.

San Diego - The Trademark Trial and Appeal board affirmed the Patent and Trademark Office's denial of a trademark application for a trademark that included the word ".MUSIC," a top-level domain name. The company, theDot Communications Network, filed five intent-to-use trademark applications in connection with the ".MUSIC" domain. The Appeal board denied the applications due to the fact that the domain ".MUSIC" was merely descriptive of goods and services and not distinct.

A top-level domain name is the last part of a domain name used for a web address. Generic top-level domain names were created to describe a general purpose and were traditionally reserved for top-level domain names such as ".COM" and ".NET." However, there has been an increase in demand for a greater array of top-level domain names that are more descriptive of the website's purpose.

In June 2011, the Internet Corporation for Assigned Names and Numbers (ICANN), approved a measure to expand the use of generic top-level domain names and allow top-level domain names such as ".MUSIC" to be used. The music industry has expressed interest in using the ".MUSIC" domain names for their websites. The application process for the new top-level domain names will begin in January, 2012 and accepted domain names will go online in 2013.

The Patent and Trademark Office's decision has set an early precedent that those intending to obtain trademarks in newly created top-level domain names will find it very difficult to win approval. Given that most new top-level domain names will be descriptive of the goods and services of the website and the fact that thedomain names will not be restricted to any one company, it's unlikely that new top-level domain names will be distinct enough for trademark approval. Unless ICANN begins approving more distinctive top-level domain names, there likely will not be a boom in trademark applications for top-level domain names.

San Diego - FC Tampa Bay, a professional men's soccer club, will be unveiling a new trademark and logo today.

Just finishing its season this fall, the team will announce its plans to use the Rowdies name and a new logo that will change from the existing shield to a retro style that will include the Rowdies name. The announcement comes after a three-year legal battle with Classic Ink, a Dallas-based retro sports apparel company, which owned the rights to the name of the former Tampa Bay NASL team.

Originally, the team was called the "FC Tampa Bay Rowdies" in honor of the Tampa Bay Rowdies of the Old North American Soccer League, Tampa's first professional sports franchise that started playing in 1975, one year before the city got its first NFL team. Due to legal issues over the Rowdies nickname, the team dropped it and officially changed its name to "FC Tampa Bay," even though fans still referred to them as the Rowdies.

Now that the soccer franchise has reached a deal with Classic Ink, it will officially be awarded exclusive rights to the Rowdies trademark and will rename itself the "Tampa Bay Rowdies" for its upcoming 2012 season. In addition to the name and logo change, the team will also be rebranding its website, Facebook page, and Twitter account. The Rowdies will also begin selling new merchandise bearing the Rowdies trademark to its fans.

Upon entering the league in 2008, the team and its parent company Citrus Ventures, was hit with a trademark infringement lawsuit by Classic Ink in a U.S. district court in Texas. To avoid further legal trouble, the team had removed all Rowdies references to its identity by October 2010, until reaching the recent agreement with the Texas-based apparel company.

Back in 2010 when the team had ceased using the Rowdies name, FC Tampa Bay owner and president Andrew Nestor said, in regards to his plans to re-obtain the Rowdies name, "It's something that takes awhile. We're still working toward a resolution, and its not completely up to us. Those things aren't completely 100 percent in our control, so you do what you can over time."

San Diego - MGM Resorts, the Nevada-based gaming corporation has filed a federal trademark infringement lawsuit against four individuals and two companies for sitting on domains that are too closely related to the MGM brand. In addition to trademark infringement, allegations from the lawsuit also include cyber squatting.

The complaint, which was filed earlier this week with the U.S. District Court in Las Vegas, claims that the defendants intentionally took several MGM gaming brand names with the intention of profiting from registering them as domain names. This allegation, according to MGM, is in direct violation with the Anticybersquatting Consumer Protection Act (ACPA).

The defendants named in the lawsuit are the owners of the following domains: bellagioonlinepoker.com, circuscircuspoker.com, excaliberpoker.com, Luxorpoker.com, mandalaybayonlinepoker.com, mgmpoker.com, and aria poker.com. All of the defendants reside in the United States with the exception of one living in London, and another living in Zimbabwe.

"The defendants have done nothing more than tack on the descriptive terms 'poker' or 'online poker' to each of the MGM trademarks to form the domain names. Accordingly, there is no question that the domain names are confusingly similar to the MGM trademarks," commented attorneys for MGM, who were trying to obtain a restraining order to immediately block the infringing sites.

MGM's lawsuit indicated that the defendants infringed on its brands and registered the domains in order to capitalize once online poker is licensed and regulated in the United States. Recently, the commercial casino industry has been pushing for new federal laws to regulate the estimated $6 billion online poker industry. The casino industry wants each individual state to be able to vote whether it will allow online poker and it is also asking that online gaming companies be licensed the same way land-based casinos are in Nevada, New Jersey, and elsewhere.

Some of the infringing sites were created as early as 2002, and MGM's recent lawsuit could indicate that it feels it will be offering licensed online poker in the near future.

San 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.

San 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.