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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.

Judge Sides with SeaWorld in Fight for Aquatica Trademark

July 15, 2013,

water-slide.jpgSan Diego - A judge in California Federal Court Tuesday refused the request by Spiraledge, Inc. to impose an injunction to bar SeaWorld Entertainment, Inc. from use of the trademark "Aquatica" for its water parks nationwide.

U.S. District Court Judge William Q. Hayes ruled that Spiraledge had failed to show that SeaWorld's use of the name "Aquatica" for its chain of water parks had damaged the reputation of its "Aquatica"-branded swimsuits. The judge noted that Spiraledge had waited 13 months to file a lawsuit against the water park operator and failed to provide evidence of loss of sales based on any confusion.

Spiraledge filed its application for "Aquatica" on an intent-to-use basis in February 2005 for use in relation to swimwear, and began sales of Aquatica-branded swimsuits in 2008. The trademark was registered in December 2011 with registration number 4,077,618.

Busch Entertainment Corporation, which was acquired by Seaworld in 2009, filed its trademark application for "Aquatica" for amusement parks seven months after Spiraledge in September 2005. The application has been stalled ever since based on Spiraledge's prior filing. The Examining Attorney for this trademark suspended the registration in April, citing the pending civil action as well as a likelihood of confusion between this trademark and the one held by Spiraledge.

Busch has successfully obtained registration for a separate trademark for "Aquatica" and "Aquatica SeaWorld's Waterpark," both for use in drinking vessels. However, applications for "Aquatica Seaworld's Waterpark" for use in amusement park services as well as clothing have also been suspended pending trial.

Since its acquisition of Busch in 2009, Seaworld has begun to operate the three water parks in Chula Vista, California, Orlando, Florida and San Antonio, Texas, all named Aquatica.

Spiraledge has argued that SeaWorld's use of the term "Aquatica" violates its trademark protection. It argues that the suspension of the "Aquatica" trademark held by SeaWorld demonstrates that the two trademarks are too similar and would lead to confusion among consumers.

This victory for SeaWorld could be short-lived. The case will proceed in federal court, and SeaWorld is free to continue use of the name "Aquatica" for its water parks until a verdict is reached. However, the possibility remains that the court could ultimately decide to force SeaWorld to cease use of the trademark "Aquatica."

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

November 5, 2012,

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

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

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

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

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

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."

New Years Eve Drop Will Change in Nashville Due to Hard Rock Trademark Issue

December 28, 2011,

hard_rock_cafe.jpgSan 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.

Atlanta Braves Cry "Foul Ball" Over Disney Trademark

December 27, 2011,

baseball.jpgSan 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.