San Diego Trademark Attorney - San Diego Trademark Lawyer

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

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

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

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

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

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

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

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

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

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

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

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

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

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

San Diego, CA - Time Warner Cable has recently obtained exclusive trademark rights for the term "Social One," its possible future platform that may offer subscribers a way to access Facebook, Twitter, and other social networks through TV.

The nation's second largest cable provider is attempting to steer consumers back in front of their television sets by offering a "single interface" for accessing social media accounts through TV and the Web.  Time Warner has also set its sights on using the Social One brand for "computer software for use on mobile and Web platforms which aggregates content from other sources, such as social media feeds and allows users to manipulate content from other sources," according to statements in its trademark application submitted in May.

The trademark application offers a more complete description of what the "Social One" trademark will be covering by stating that it will be, "providing access via a global computer network and television to email, instant messaging and social media accounts within a single user interface; providing online access to aggregated user content, namely, text audio, and video; providing Internet access; providing email and instant messaging services; [and] transmission of news."

With Americans spending more and more time each month connecting with friends on Facebook and other social media platforms, Verizon, Comcast, and other cable TV providers are starting to incorporate the social networks into their digital cable offerings.  Verizon's Widget Bazaar allows its FiOS TV subscribers to access their Facebook, Twitter, and YouTube accounts while Comcast has promised that the next version of its interactive program guide would allow subscribers to recommend content to Facebook friends.

Facebook is also on the same playing field, with its attempts to integrate its platform with a wide variety of media services.  Last week, the social networking giant announced that it would allow TiVo and Netflix subscribers to share information with friends about what content they are watching on TV.

San Diego, CA - Earlier this year, Anheuser-Busch InBev acquired Chicago-based Goose Island Beer Company for $38.8 million and pledged an additional $1.3 million to expand Goose Island's brewing capacity to meet its rapidly growing demand. According to the Chicago Tribune, the deal included trademarks on "312 Urban Wheat" and "312 Urban Wheat Ale Goose Island Chicago," one of Goose Island's most popular beers. Anheuser-Busch recently applied for 15 additional trademarks for the area codes of major cities throughout the U.S. including San Diego's 619 and San Francisco's (415).

Anheuser-Busch's move to acquire these trademarks suggests that the company may plan to release similar pseudo-craft beers in the implicated cities to replicate the success found with Goose Island's 312 Urban Wheat. The idea being that having an area code associated with a beer provides a seemingly local and authentic feel to the beer that attracts thirsty consumers. The other prevailing theory is that Anheuser-Busch simply wishes to protect itself from the threat of its competition mimicking the success of 312 by releasing beers stamped with the area code of their respective cities.

The Applications were filed on an Intent to Use basis meaning they are not yet in use in commerce. If the USPTO issues a Notice of Allowance after the trademark is published for Opposition in the Official Gazette, Anheuser Busch will be able to request extensions for up to three years if the trademark is not yet in use. The trademark only protects the area code from being used in association with products or services that are likely to be confused with Anheuser Busch's use for beer. San Diego residents should be on the lookout for an Anheuser-Busch product disguised as a 619 craft beer.

San Diego, CA - It's no secret that nonprofit organizations compete for donation dollars. So when Americans tighten their belts during economic downturns and give less to charity, the competition between these nonprofits can be fierce.

Susan G. Komen for the Cure spends close to one million of its donated dollars every year to protect its trademarks by policing the Internet for other charities and events that use any variation of "for the cure" in its name. Thus far, the charity which has managed to raise millions of dollars for breast cancer research, has filed trademark oppositions against many small organizations that lack the funds for legal representation. Some of these nonprofits include Surfing for a Cure and Cupcakes for a Cure, both of which raise money for cancer research.

Many have criticized the money and efforts Komen has spent opposing other charities, often times calling the group a bully. Those who have denounced the charity, think that its aggressiveness will not only damage smaller charities, but will be counterproductive to its own.

Despite the criticism, attorneys for Komen claim that they have a legal duty to the charity to protect its more than 200 trademarks, however they try to be plausible when dealing with the small nonprofits. A Komen attorney stated, "It's never our goal to shut down a nonprofit and we try very hard to be reasonable, but it's still our obligation to make sure that our trademarks are used appropriately so there's no confusion in the marketplace over where people's money is going."

When "for the cure" is used by other charities, a likelihood of confusion exists along with the threat of a donor thinking he is giving money to one charity, but in reality giving to another. Another problem that exists is when fraudulent charities pop up on the Internet, soliciting donations from people.

Although we understand the efforts to police the trademark, we wonder if $1,000,000 a year and 200 trademarks are really necessary.

San Diego, CA - In the ever-increasingly saturated market of mobile media devices, evidence suggests that Hewlett Packard (HP) has something new in the works. According to the United States Patent and Trademark Office, there has been a recent trademark application filed for "HP Touchpad", which includes "tablet computers".

Thus far, there have been no hints on what operating system this new device will be running. Will it possibly be an Android-based device running Honeycomb? The HP webOS tablets are called "Opal" and "Topaz" and its Windows-based devices are called "Slates" by HP. It doesn't seem as if "Touchpad" is a fit into any of those product lines.

It is also plausible to assume that HP is gradually trying to phase out the Palm trademark that it acquired in 2010 due to negative reviews of the brand. Is the "HP Touchpad" replacing the "PalmPad" trademark which HP filed for in July 2010?

Whatever the path may be, it appears that HP wants to cover all bases.

San Diego, CA - Ivana Trump has reached an agreement with Finnish clothing designer Paola Suhonen concerning trademark use. Back in 2010, the ex-wife of "The Donald" filed suit against the Finnish fashion house with claims that it was attempting to trick consumers "into the erroneous belief " that she (Trump) is somehow connected to its "IVANAHelsinki" clothing line. The suit sought unspecified damages for trademark infringement, unfair competition and violations of privacy and publicity rights.

Paola Suhonen refused to comply Trump's demands alleging that consumers would not likely be confused or mislead. In fact, Trump had abandoned her clothing line many years ago and in 2006 she abandoned her federal trademark registration for clothing. Trump's only argument was that the Finnish company was seeking to capitalize on her famous branded name, "Ivana."

The parties ultimately reached a settlement wherein Suhonen agreed to slightly alter the trademark by putting a space between the two words, i.e., "IVANA Helsinki". Considering that the addition or deletion of a space has little to no effect on a likelihood of confusion analysis, it appears that Ivana Trump tired of litigating and decided to end the matter on any terms agreeable to the other side. This is understandable because the case appeared questionable to begin with.

San Diego, CA - Seeking expansion into the Canadian retail market, U.S. discount-retailer Target is facing major pushback from Fairweather Ltd. Fairweather filed a $250 million trademark infringement suit against the U.S. giant on grounds that it exclusively owns the right to use the Target name in Canada. Fairweather Ltd has owned the "Target Apparel" name in Canada for 10 years.

Target, which is known for name-brand merchandise priced for the masses announced last month its plans to open more than 200 stores in Canada over the next 10 years. Many of these new Target stores will be the result of spending over $1.83 billion to take over existing leases from Zellers retail chain, a subsidiary of Hudson's Bay Company.

Jessica Carlson, a Target spokeswoman, was unable to comment on the court proceedings but did mention that Target plans to use the same name, branding, and famous bull's eye logo that it uses in the U.S.. "There really is nothing that prevents Target from using the Target name and branding elements in Canada the same way we do in the United States," she said.

Target has challenged whether Fairweather has made continuous use of its trademark. Since the response from Target, Fairweather Ltd has opened "Target Apparel" stores in Ontario and British Colombia. It has until the end of this month to prove to the Canadian trademark office that it has used the Target name in the past three years or has plans to use it.

Since the trademarks and goods at issue are similar, it appears that Target has its work cut out in proving that canadian consumers are not likely to be confused between the two trademarks.

San Diego, CA - In August 2010 Digital Chocolate filed a complaint against Zynga alleging trademark infringement over the Mafia Wars brand. Very recently the case was settled out of court but details regarding damages and terms have yet to be disclosed to the public. There have not been any changes made to the Mafia Wars game and it still reflects Zynga as the creator so there may be some sort of phase-out period in place.

According to the original complaint, in 2004 Digital Chocolate released a Mafia Wars mobile game followed by three sequels up to 2009. Zynga, the social gaming company from San Francisco, wasn't founded until 2007 and didn't release its version of Mafia Wars until 2008. In 2009, Digital Chocolate sent Zynga a cease and desist letter, demanding that it stop using the Mafia Wars trademark which then led to the lawsuit. In addition to suing for trademark infringement, Digital Chocolate also charged Zynga with unfair competition, false designation of origin and cyber-squatting.

Considering both companies are in the same industry, we're not sure how Zynga couldn't have known of the prior existing Mafia Wars game. It may be that Zynga has a shoot first ask questionns later type of approach to intellectual property because this lawsuit is just one of many that Zynga has been juggling recently. In January, it was also sued by Walker Digital for patent infringement over its Farmville game.

San Diego, CA - It appears that Ringo Starr has been bitten by the technology bug. After appearing in the video game: "The Beatles: Rock Band", the famous drummer has applied to register the trademark "Ringo" for future use in relation to "computer game software" and "games via the Internet and wireless devices."

On January 23, Starr, who's real name is Richard Starkey, filed the registration papers with the United States Patent and Trademark Office. In addition to checking the boxes for "computer game software" and "games via the Internet and wireless devices", Starr also included the class for "use in toys, plush toys, stuffed toys and board games."

Perhaps we are in store for a Ringo-themed video game or app? Whatever Mr. Starkey has up his sleeve isn't yet clear. Nevertheless, when it comes to protecting the trademark he worked so hard to earn, it's clear this drummer doesn't miss a beat.

San Diego, CA - Facebook has removed a page from its website as a result of a trademark complaint submitted by the Seventh-Day Adventists.

A group calling itself "Adventists for Life" was the culprit. Seventh Day Adventists have trademarked "Adventist" and the church activily polices its trademarks.

The church also sent a cease and desist letter which asked Adventists for Life to abandon the domain name www.adventistsforlife.org. The domain name is currently parked.

An interesting question is whether the ADVENTIST trademark is merely descriptive of the goods and services being offered. In other words, a Catholic church would be hard-pressed to register the trademark CATHOLIC for use in relation to religious services. A trademark that is generic or merely descriptive of the goods or services at issue generally cannot be protected. Perhaps Adventists for Life should have sought legal counsel to respond to the complaint?

San Diego, CA - Everything Anna Chapman does is calculating, to say the least. To cash in on her growing popularity since her arrest and deportation last year, the Russian spy has registered her name as a trademark, according to Russia's state patent and trademark agency.

The 28-year old femme fatale has been basking in the spotlight since her arrest in July and her extradition back to Russia. She has done everything from posing in sexy lingerie, appearing at a Russian space launch, to performing a sing-along with Prime Minister Vladimir Putin.

Nicknamed Agent "90-60-90" by Russian press because of her apparent measurements, Chapman registered her name as a trademark for eight classes of merchandise, which included vodka, clothing and watches. Thus far, it is unclear how Ms. Chapman plans to use the trademark but what is apparent is that she wants to cover all bases.

Chapman has recently been working to boost her public image. She has appeared at a political youth rally and two weeks ago launched a weekly television show called "Mysteries of the World with Anna Chapman."

San Diego, CA - In April 2008, Jim M. Sweeney filed for the CORVOLTTE trademark for electric vehicles, namely automobiles. General Motors (GM), owners of the famous CORVETTE trademark since 1952, immediately filed an opposition claiming a likelihood of confusion. On December 10, 2010, a panel of three trademark judges ruled in favor of GM but not without scolding GM for its indolent efforts in defending the trademark.

According to the seven-page decision, GM used a Wikipedia definition for CORVETTE as its main defense in the opposition. The decision went on to say that GM failed to allege that its CORVETTE trademark became famous prior to the filing date of the application of the CORVOLTTE trademark. Apparently, GM provided proof of the CORVETTE trademark registrations showing that it was the current owner of the trademark, but did not bother to include the registration information for the specific trademark class at issue: Automobiles.

GM also didn't bother to provide evidence of past sales and advertising or to defend the extent of the trademark's fame. Instead, it relied solely on excerpts from Corvette America's Sports Car and Corvette Illustrated Encyclopedia in addition to the Wikipedia entry for CORVETTE. Mr. Sweeney admitted that GM is the owner of the CORVETTE trademark and has been using it in relation to automobiles since 1952, but denied that there would be a likelihood of confusion between the two trademarks.

The court went on to further rebuke GM for its lackadaisical defense of its mark by saying:

"There is no evidence of sales, advertising or to the extent of the mark's renown. To the extent that the opposer has relied on the Wikipedia evidence to establish the fame of the CORVETTE mark, an Internet entry is admissible for the limited purpose of demonstrating what has been printed, not for the truth of what has been printed".

Unfortunately for Sweeney, GM's bad defense couldn't save CORVOLLTE.

San Diego, CA - On December 20th, Hansen Beverage Company was stung by PBEV, LLC in a federal trademark infringement suit filed in Alabama federal court over use of the Killer-B Nitrous Monster Energy drink line. Stan Pate, owner of PBEV, LLC, quipped "I'm not afraid of a Monster" and that he would fight to protect his Killer-Buzz trademark.

PBEV, an Alabama-based beverage company, uses the combination of 17 amino acids, that it claims can provide the energy and stamina of the Asian Giant Hornet. The ingredients in Hansen's Killer-B drink include bee pollen and honey. A day after the December 20th filing, Hansen filed its own suit in Delaware federal court, asking that the case be thrown out. Hansen claims that there was no infringement and that it has been using the term "buzz" on its packaging since 2002. Hason also points to the use of its trademarked Monster claw-marks on the honey-combed can which it claims lessens any potential for confusion.

Since acquiring the drink line from Vespa Beverages in March 2010, PBEV has realized $1 million in sales of "Killer Buzz". Hansen reportedly has the lion's share with over $1 billion in energy drink sales in 2009.

According to USPTO.gov, the "Killer Buzz" trademark was first used in commerce in early 2005 while "Killer-B" has been in use since July 2009. Just over one year ago, Hansen challenged another small player when it sent a cease and desist letter to Rock Art Brewery asking them to stop using the name "Vermonster". The dispute was settled out of court when Hansen agreed to let the brewer continue using "Vermonster" as long as it only used the trademark for barley wine, and not for energy drinks.