Too square

We all understood by now that under Wal-Mart, trade dress that is deemed to be “product packaging” — unlike “product configuration” — “may be inherently distinctive and therefore, registrable, without proof of acquired distinctiveness.” Now John Welch writes about a TTAB decision in a case called In re Icelandic Provisions, Inc. concerning a container for some kind of Viking food (no, not this) called “skyre.” The question presented by the distinctively-represented applicant, appealing a refusal to register product packaging on the Principle Register, was, how square is too square to be inherently distinctive? In the TTAB, the test for what qualifies as inherently…

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Search or destroy

Originally posted 2014-05-22 10:48:29. Republished by Blog Post PromoterThe Cincinnati Enquirer reports this chilling story: A local attorney and instructor in legal studies at the University of Cincinnati’s Clermont College has been hit with a $1.3 million malpractice judgment for negligence that helped put a local company out of business. . . . According to Judge Triantafilou’s ruling in the bench trial, Davis was negligent in performing his duties as the company’s trademark attorney when My Girl Friday was starting to sell franchises around the country. That negligence included telling Collinsworth for more than two years that he had done... Read more

Gucci v. Frontline Processing: Giving credit for infringement where it’s due

Originally posted 2010-07-12 08:05:37. Republished by Blog Post Promoter The essential role played by credit card companies in online trademark infringement was recognized in Gucci America, Inc. v. Frontline Processing Corp. In that case, the court allowed contributory infringement claims to go forward against companies that had established credit card processing for an online counterfeit merchant. The payment for the counterfeit goods sold on its website was part of the infringing process, the court reasoned, drawing on Judge Kozinski’s dissent in Perfect 10, Inc. v. Visa Intern. Serv. Ass’n, and most of the infringing sales – of which the companies... Read more

Impaneled in Seattle

I’m here now for tomorrow’s McCarthy Institute and Microsoft Corporation Symposium, “Trademark Law and Its Challenges 2017” at the Amazon Corporate Conference Center. My panel looks like this: 9:50AM-11:00AM Trademark Disparagement and the First Amendment Marc Levy, Partner, Seed IP Law Group (Moderator) Tom McCarthy, Senior Professor, USF School of Law Lorelei Ritchie, Administrative Trademark Judge, USPTO TTAB Ronald Coleman, Partner, Archer & Greiner Makalika Naholowaa, Attorney, Corporate, External & Legal Affairs, Microsoft Stephen Coates, Senior Counsel, Amazon Yes, that does seem like a lot to pack into 70 minutes.  But I have carefully chosen 26 words and I am,... Read more

Fraud, trademark, and rights

Originally posted 2012-12-30 15:00:10. Republished by Blog Post PromoterMises Blog: This is my main problem with current trademark law — that in transferring the customer-fraud-based right to trademark holders, the fraud basis is lost over time, as the trademark right is conceived of as a right of the trademark holder. Then it gets broadened and extended, as all IP law does, just like money is continually debased and rights are continually diluted — for example, now trademark law has the horrendous “anti-dilution” cause of action, which does not even require “consumer confusion,” which at least standard trademark infringement claims do. Read more

Bratz, foiled again! (Bumped and updated)

Originally posted 2014-01-22 13:44:34. Republished by Blog Post Promoter First, December’s 15, 2009’s story: Remember the Bratz dolls case, and the phenomenal legal fees application that followed? It’s back!   The Ninth Circuit Court of Appeals stayed the trial judge’s order basically liquidating the Bratz.  Here’s what the WSJ Law Blog reported last week: The Ninth Circuit on Wednesday ruled that Bratz maker MGA Entertainment can continue selling its dolls, despite the stinging defeat it suffered last year a jury when a Riverside, Calif., jury awarded Mattel, Inc. $100 million in damages in a closely followed copyright-infringement lawsuit. . .... Read more

Give bees a summons

Originally posted 2013-08-05 13:37:46. Republished by Blog Post PromoterYes, another slogan lawsuit — one of my favorite topics (also here and here). A Fort Lauderdale company has sued the makers of the “Bee Movie” over the use of their slogan, “Give Bees a Chance.”Nick Daly of the Google Copyright blog writes in: I’ve got another great slogan lawsuit for you. Looks like a company that sells cosmetics containing honey is suing Dreamworks and Paramount over the slogan “Give Bees a Chance,” which is registered to the cosmetics company and was used in television commercials for the movie. It’s a total... Read more