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"Hanginout" Alleges Google's Use of "Hangouts" is a Trademark Infringement

December 11, 2013,

google.jpgSan Diego - A lawsuit filed in late November by San Diego based Hanginout, Inc. claims that Google, Inc. has infringed its trademark for its video-focused social media app. The smaller company located in Carlsbad claims that it was using "Hanginout" before Google began use of "Hangouts." The complaint demands that Google immediately stop use of "Hangouts" and that the court award lost profits and impose punitive damages.

Hanginout, Inc. filed its trademark application for "Hanginout" with the United States Patent and Trademark Office (USPTO) in July 2012, through the company's complaint claims that the brand has been around since 2009. The application covers, among other things, "Computer application software for mobile devices for sharing information, photos, audio and video content" as well as "providing online and telecommunication facilities for real-time and on-demand interaction between and among users of computers, mobile and handheld computers."

In contrast, Google's trademark application for "Hangouts" was filed in April of 2013 and through more expansive, covers essentially the same goods and services as the "Hanginout" Application. According to the lawsuit, which was filed with the U.S. District Court for the Southern District of California, Hanginout is a platform that enables users to build video profiles and send video chat messages to followers. The description of the Google Hangouts app on its website describes how the program allows users to "Turn any Hangout into a live video call with up to 10 friends."

Google's trademark application was suspended upon filing by the USPTO due to Hanginout's previously filed Application. The complaint claims that, "Google's 'Hangouts' trademark is nearly identical to Hanginout's 'Hanginout' trademark in both appearance and sound," and that "Google's infringement of Hanginout's trademarks was willful and with knowledge that ... use of the 'Hangout' trademark would or was likely to cause confusion and deceive others."

The complaint goes on to point out that, "Google has advertised Google's Hangouts to replicate Hanginout's products' capabilities." It also brings to light several examples of what Hanginout describes as intentionally confusing marketing materials. Google has yet to offer any response as to the lawsuit.

"Famous Jameis" Trademark Gets Swooped Up by Alabama Fan

November 12, 2013,

football.jpgSan Diego - A doctor from Birmingham, Alabama has filed a U.S. Trademark Application for "Famous Jameis", the same nickname that has been recently popularized as referring to Florida State Seminoles quarterback Jameis Winston. The application was filed with the United States Patent and Trademark Office ("USPTO") on October 24, 2013 in connection with "Athletic pants; Athletic shirts; Body shirts; Clothing for athletic use, namely, padded pants; Clothing for athletic use, namely, padded shirts; Golf shirts; Gym pants; Hats; Hooded sweat shirts; Shirts; Shirts and short-sleeved shirts; Sport shirts; Sports caps and hats; Sports pants; Sports shirts; Sweat pants; Sweat shirts; T-shirts; Tee shirts."

Dr. Mukul Mehra, who attended the University of Alabama School of Medicine in Birmingham, has no official ties to the standout Florida Seminoles Player, who grew up in a suburb of Birmingham. With respect to the filing, Mehra denied that he chose the trademark solely because of Jameis Winston, saying, "It's not necessarily geared toward him... I don't know what our intent completely is. We haven't worked all of that out." He has, however, already approached an Alabama sports marketing company about manufacturing t-shirts branded with the "Famous Jameis" trademark.

Whether the Examining Attorney at the USPTO will realize that the moniker has come to fame as a nickname for an actual person remains to be seen. Regardless, given the publicity the filing has garnered, it is likely that Mr. Winston himself has learned about the application and perhaps he will consider opposing the application or even buying it. Indeed, it seems that Mehra has already considered this as he was quoted as saying, "If it's something they're interested in using, we could potentially market it together."

This situation draws parallels to the contentious dispute that arose last year when a California businessman filed a trademark application for NBA player Jeremy Lin's "Linsanity" nickname. After months of legal back and forth, the USPTO finally awarded Lin the trademark. Both Lin and Winston shot to sports stardom in relatively short periods of time, gaining huge fan bases and large social media followings in a matter of months. With Winston's popularity only rising as the Seminoles push towards a potential BCS title and he continues to be brought up in Heisman talks, the trademark associated with his name only seems to be growing in value. The question remains, however, whether Winston or someone else will be the one to profit from it.

Starbucks' New Trademark Filing Reveals Plans for Fizzy Drinks

October 16, 2013,

soda.jpgSan Diego - A recently filed Trademark Application by Starbucks Corporation may evidence the coffee giant's intent to branch out into the market of carbonated beverages. The Application, which was filed on September 30, 2013, is for the name "STARBUCKS FIZZIO." It covers five classes, including milk based drinks, sparkling beverages and "machines for the production of beverages."

The filing gives an inside glimpse into what might possibly be Starbucks' next big move. Its recent introduction of carbonated drinks into select test markets furthers the theory that fizzy drinks are next up for the company best known for its fresh brewed coffee and caffeine-filled blended drinks. Still, Starbucks has been keeping mum as one spokesperson said that it has "not announced any plans about expanded availability" of the fizzy beverages outside of the current test markets of Atlanta and Austin.

Further speculation has led to thought that the Trademark Application's inclusion of beverage making machines might be a step towards Starbuck's production of a device that could compete with Sodastream. As the world's bestselling and most popular carbonated beverage machine, Sodastream seems to have almost complete control over the self-serve soda market with no established competitors. Starbucks may be looking to change this, especially given its already demonstrated interest and success with at-home beverage devices, such as the Starbucks Verismo. Despite this, a Starbucks rep was recently quoted as saying that the company does "not have plans for an at-home machine at this time."

Starbucks' push into the carbonated beverages arena would be another in a string of advances into markets outside of coffee. The company has made it a recent pattern to try out new products in select test markets, buy out smaller successful companies and then market the products nationwide in its more than 13,000 U.S. retail locations. Some of its more recent acquisitions include Evolution Fresh juices, La Boulange baked goods, and Teavana tea. Even further pushing the limits of development, Starbucks recently introduced "Starbucks Evening" locations in six U.S. cities, which feature beer, wine and snacks. Considering this rate of expansion into new areas, "Starbucks Fizzio," may very well be the next thing served up in white and green cups.

Facebook Argues TIMELINES is a Generic Trademark, Rival Disagrees

March 11, 2013,

facebook.jpgSan Diego - Timelines, Inc. argued in an opposition filed Wednesday that the company's TIMELINES trademark is not too generic to deserve protection and that Facebook, Inc.'s timeline feature on its popular networking site infringes the trademark.

The company filed the opposition in response to Facebook's motion for summary judgment requesting that the lawsuit be dismissed. The trademark infringement lawsuit began when Timelines sued Facebook one week after it learned the social media website had launched a new feature that allows users of the website to create virtual timelines with photos, videos, and other media devices.

As Timelines' website Timelines.com provides users a relatively similar online service, the company filed the lawsuit against Facebook alleging trademark infringement and claiming that Facebook's new feature would drive Timelines out of business.

In its motion for summary judgment, Facebook argued that though Timelines has three U.S. trademark registrations for the word TIMELINES in conjunction with software services provided over the internet, the term is generic and does not warrant protection. The January 31st motion claimed that since the term is defined as "an arrangement of events or other information in chronological order," and Timelines provides a service that allows users to record and connect events in a specific order, the trademark is merely descriptive of its services.

Timelines countered that genericness should be determined by a jury, rather than in a motion for summary judgment, due to the fact-intensive nature of the process. Timelines also countered Facebook's claims that the term's genericness is evidenced by its appearance in numerous dictionaries.

"Facebook forgets that its very name comes from the 'generic' name that was given to certain college picture books known as 'face books,'" Timelines said. "Moreover, Facebook's own trademark history demonstrates that it seeks trademark protection for terms that appear in dictionaries, including 14 trademark applications for the term 'like' alone, almost all of which concern Facebook's 'Like' button, which its users click on when they ... like something."

Timelines is seeking damages and a permanent injunction prohibiting Facebook from using TIMELINES or any similar version of the trademark. Facebook is requesting a declaratory judgment that the website's timeline feature does not infringe Timelines' trademarks in addition to cancellation of those trademarks.

132 Websites Seized for Selling Counterfeit Goods During Cyber Monday Crackdown

November 27, 2012,

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

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

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

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

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

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

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

Among this year's seizures was a San Diego based company, Staxxs on Deck. On its website at www.23isking.com the company sells counterfeit Nike footwear. According to the affidavit, the website had made $1.5 million in fake goods.

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

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

PTO Gets Tough On Green Trademark Claims

October 5, 2012,

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

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

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

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

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

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

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

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

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

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

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

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.

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."

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.

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.

Beyonce and Jay-Z Trademark Their Baby's Name

May 29, 2012,

concert.jpgSan Diego - While it is not surprising to see the wide variety of unique baby monikers popping up everywhere, some may see it as surprising to see that Beyonce and Jay-Z have recently trademarked their new baby's name "Blue Ivy".

On its face, one might think it seems downright crazy that someone would go to the trouble and expense of actually trying to prevent other parents from using a particular name. However, there is more to their seeming madness than meets the eye.

Though the birth of a child or a child itself would not necessarily be considered unique and original enough to necessitate trademark protection, the use of a baby's name for product branding the incentive for Trademark protection. In this case, the branding of future products is the ultimate goal Beyonce and Jay-Z had in mind. As the creators of a number of popular clothing lines and other products, both Beyonce and Jay-Z, are no strangers to the world of product branding. It is also not surprising that they would consider the birth of their first child ample inspiration for the creation of a line of clothing or other items. Born January 7th, in New York City, it is speculated that little Blue Ivy will most likely be the miniature muse for a future line of baby clothing and children's items.

So what does that mean for the average parent looking to name their child Blue Ivy or parents seeking to protect their own unique moniker? Trademarking a name obviously does not prevent other parents from using your child's name. As such, parents would only be protected from other parents trying to financially profit from the use of a registered name. For example, if you named your child Greyhound, the bus company would only have a claim if you created a rival bus company named after and based around your offspring. So those of you looking to name your baby Blue Ivy, feel free to use the name, as long as you don't plan on using the name later to start a clothing line or any other similar project for profit.

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

April 30, 2012,

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

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

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

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

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

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

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

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

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

San Diego Based Cricket Wireless Prevails in Trademark Infringement Lawsuit

February 21, 2012,

cellphone-flip-isolated-in-white.jpgSan 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.

Trademark Application Denied For ".MUSIC" Domain Name

December 20, 2011,

domain-name-http- www.jpgSan 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.