Online use of trademarks by “unauthorized distributors”
October 6th, 2007 by Ron Coleman | Print
LIKELIHOOD OF CONFUSION does not generally comment about active cases in which we are directly involved. But a very important and detailed (61 pages!) summary judgment decision came down in the U.S. District Court for the Eastern District of New York last week, in the case of S & L Vitamins, Inc. v. Australian Gold, Inc., 2:05-cv-1217 in which I represent the plaintiff. And while we will not comment on the decision, for obvious reasons, any reader of this blog involved in trademarks and the Internet will want to read it. So here it is. Credit to David Nieporent, co-author on the plaintiff’s brief!
UPDATE: Cogent commentary from Eric Goldman and Matthew Sag; now comes Rebecca Tushnet.
October 11th, 2007 at 10:12 am
[...] “In a recent ruling, the Ninth Circuit Court of Appeals rejected the notion that there is anything like a cause of action under the Lanham Act, the statu[t]e governing trademark law in the United States, for so-called ‘trademark disparagement,’ ” Coleman said. The courts have also rejected the notion that the use of a trademark as a search term is a “legally cognizable use” as a trademark use under federal trademark law, he added. Coleman is also general counsel for the Media Bloggers Association. [...]
November 27th, 2007 at 2:59 pm
[...] Judges — especially in the Eastern District of New York — are picking up what’s going on in the “elite salons” end of the trademarks-as-distribution-method-enforcement scam: [...]
March 4th, 2008 at 9:28 am
[...] This particular case — the complaint, courtesy of Evan, is here – raises an interesting issue in terms of how the prominent use of the desired brand name in the overall marketing campaign, along with a very generic description of the seller, could lead to confusion as to source (i.e., of the offer) or sponsorship. That would be fine with LIKELIHOOD OF CONFUSION® if that kind of analysis were reserved for allegedly close cases such as this, and not applied to retail sellers (typically online) of trademark-protected goods that are not “authorized” by the mark owner. (Yes, I am very biased.) In the midst of numerous decisions granting plenipotentiary powers over markets and marketing to anyone with a trademark registration, this could be just that hard case that could firm up an already troubling legal trend. But, hey, even trademark owners have rights! [...]
May 21st, 2008 at 5:38 pm
[...] reported earlier on a related case in this area implicating the use of trademarks to sell merchandise online via “unauthorized [...]
September 7th, 2008 at 2:19 am
[...] maybe, but you must agree with what we have argued at LIKELIHOOD OF CONFUSION® (and in a courtroom or two) for years: This is not a deceptive trade practice, it’s free speech and consumer [...]
November 12th, 2008 at 10:53 am
[...] and remember — Buy Designer Skin and Australian Gold tanning lotion from my client S&L Vitamins (i.e., Body Source Online)!! It’s the way [...]
December 10th, 2008 at 11:26 pm
[...] tanning goop manufacturers Australian Gold and Designer Skin, Scientology wants to control distribution of its merchandise; like those [...]