Orange County Trademark Attorney® Blog

December 2011 Archives

RIM Seeks Dismissal Of Trademark Lawsuit For "BBM" Acronym

December 28, 2011,

cellphones.jpgOrange County - Research in Motion, LTD ("RIM"), the Canadian telecommunications giant who produces the BlackBerry smartphone, filed a motion for dismissal of a trademark lawsuit against their commonly used BlackBerry Messenger acronym, "BBM." The lawsuit filed earlier this month by BBM Canada, a Toronto-based radio and broadcasting company, alleges that the "BBM" name used by RIM causes confusion with its clients and employees.

BBM Canada was founded in 1944 and changed its name to BBM in the 1960s before settling on BBM Canada in the early 1990s. BBM Canada provides data and audience measurement analysis for radio and television broadcasting across Canada. BBM Canada currently employs 650 people with $50 million in annual financial revenue as opposed to RIM who employs 17,000 people and had $5 billion in revenue last quarter. BBM Canada's Chief Executive Officer, Jim Macleod, argues that small size of his company should not be a factor, "I'm sure to a really big company this looks like relatively small numbers, but to us it's a big deal."

Another issue is the global reach of Blackberry Messenger that has defined the acronym "BBM" in Canada and abroad. RIM boasts 50 million users worldwide of their BlackBerry smartphones and messenger service. MacLeod understands his company's limitations, "We have to be practical, they operate worldwide, we don't. But we're not prepared to just walk from our name." MacLeod argues that within Canada, he is often mistaken for a RIM executive and BBM Canada call operators receive up to 250,000 calls a year from Canadians who similarly mistake BBM Canada for RIM.

In a statement by RIM, they contend that they should be allowed to use the "BBM" acronym because "the two companies [RIM and BBM Canada] are in different industries and have never been competitors in any area." RIM also argues that under Canadian trademark law, two trademarks are eligible to co-exist if the services do not overlap. It's one of debate how separate and divergent the industries are for RIM and BBM Canada.

The Canadian Intellectual Property Office (CIPO) also weighed on this lawsuit by filing a letter to the court stating the "BBM" trademark does not appear to be registrable after it denied RIM's trademark application for "BBM" in 2009. RIM maintains that its trademark application is still pending and that any "inference by BBM Canada that CIPO has refused RIM's BBM trademark application is quite frankly very misleading." McLeod disagrees with RIM's assessment of its trademark application with CIPO arguing that while RIM filed an extension of its trademark application in 2009, they have not pursued the matter any further.

NASDAQ Files Opposition to METDAQ Trademark

December 27, 2011,

stock-market-bull.jpgOrange County - METDAQ, an online portal for the business to business marketplace, launched a new website in September and is now facing opposition to its trademark application by NASDAQ OMX. The opposition, filed with the United States Patent and Trademark Office (USPTO), is in reference to a trademark application consisting of a stylized image of a bodybuilder in a partial kneeling position to the left of the word METDAQ.

Launched September 1, 2011, metdaq.com is a business to business online portal intended to link metal companies, buyers, vendors, or any company interested in metallurgy and metal working. METDAQ has an online database of metal services providers in order to simplify the efforts of businesses in their search for the right vendor for their daily metal trade activities. Its website is also a place for these companies and individuals to buy and sell products.

NASDAQ contends that Metdaq's use of the same suffix will likely cause confusion, mistake, and/or deception in the general public and is also claiming first use and first use in commerce for the DAQ suffix. The New York-based NASDAQ is also insisting that when purchasers, potential purchasers, and users see the METDAQ trademark used in connection with its online metal services, they would be mislead to believe that such services are provided or are in affiliation with, or sponsored by NASDAQ. This confusion, NASDAQ claims, is likely to result in damage and injury to its business and reputation.

A spokesperson for Metdaq, which is not in the business of trading stocks, quoting commodity prices, or any other stock market trade information, states that, "We are puzzled by the objection to our application as we operate in a different arena and are in no way trying to pass ourselves off as related to NASDAQ. It seems an investigation will be necessary to decide if NASDAQ owns the rights to the suffix "DAQ". However "DAQ" is also used by several other companies, for example, there is BETDAQ, JASDAQ, and FORDAQ."

In its short time online, Metdaq's website has been visited by over 100,000 businesses and consumers.

Augme Trademark Infringement Case Against AOL Transferred from Orange County to New York

December 20, 2011,

radio-boombox.jpgOrange County - The United States District Court in New York has scheduled a pretrial conference for early next year for a trademark infringement lawsuit filed by Augme Technologies, Inc. against the Internet Service Provider America Online (AOL). The judges order for the pretrial conference will require the parties to create a schedule to prepare their case and to set a trial date.

The case, which was originally filed by Augme in January, 2009, was transferred from the United States District Court for the Central District of California to the New York court, at the request of the defendants' counsel. Augme's complaint includes allegations of trademark infringement, unfair competition, and false designation of origin in connection with AOL's use of THE BOOMBOX designation on its website www.theboombox.com. This, according to Augme, is confusingly similar to its registered trademarks BOOMBOX RADIO and BOOMBOX and the company is seeking a permanent injunction and unspecified damages for the alleged infringement.

Augme's complaint also includes allegations of patent infringement against not only AOL, but also Time Warner and Platform-A, AOL's advertising organization. According to the complaint, the three defendants are guilty of infringing on Augme's United States Patent No. 6,594,691, "Method and System for Adding Function to a Web Page," and United States Patent No. 7,269,636, "Method and Code Module for Adding Function to a Webpage."

"The setting of a trial date for this case represents a significant milestone," stated Paul Arena, CEO for Augme. "Our legal counsel will, at this conference, present a detailed proposal to the court for advancing this case to trial. This case is directed at the AOL advertising systems, including its Project Devil, Platform-A, and Time Warner ad delivery systems, which have accumulated what we believe to be significant damages during AOL and Time Warner's continued and blatant infringement on our intellectual property."

Augme Technologies is a full-service marketing solutions and patented technology provider. The company creates strategic solutions and mobile technology to leading consumer and healthcare brands, specifically through the use of its AD LIFE mobile marketing technology platform. This platform consists of consumer response tags, UPC codes, SMS, Image Recognition, mobile banner, and rich media ads, in order to facilitate consumer brand interaction and the ability to track and analyze marketing campaign data.

"Dragon Nest" Trademark Infringement Lawsuit Goes to Trial

December 16, 2011,

game-controller.jpgOrange County - Yesterday, in a Shanghai, China courtroom, Shanda Interactive Entertainment went to trial in a trademark infringement lawsuit against Shenzhen-based technology company that alleged Shanda infringed its trademark by using a similar name in a popular online game.

According to court documents, Shenzhen-based Teelio Technology Co Ltd, initiated the legal battle last year, alleging that Shanda's Chinese name for "Dragon Nest," "Long Zhi Gu," infringed "Long Gu," a registered trademark of Teelio. Reportedly, Teelio was seeking 56 million yuan (US$8.79 million) to sell the trademark, or an annual fee of 12 million yuan in licensing fees from Shanda for it to continue using the trademark.

Teelio stated to the court that the two names had no difference in their Chinese meanings, as "Zhi" was equal to "zero" in English. In the Chinese language, long translates to dragon, and gu translates to valley, a place where the dragon creature lives in the game.

Shanghai-based Shanda argued back that the two trademarks were registered under different categories, with "Long Gu" being a commodity trademark and "Long Zhi Gu" being a service trademark, and that therefore, no infringement existed. In response, Teelio offered evidence to the judge that Shanda had released a console game version of "Dragon Nest" as a free download available on its website in order to attract online game players. This, according to Teelio, was not in the scope of the service trademark.

An attorney for Teelio claimed that the service trademark applies to computer programs that can only be run on the Internet, and not console games or programs.

Teelio's lawyer stated in court, "Apparently, Shanda has violated the regulation as the console game can be played even if players do not have access to the Internet."

Shanda defended its console-game version by countering that "Dragon Nest" was free and simply served as a guide to assist new players in familiarizing themselves with the online version, similar to a trailer for moviegoers.

In addition to trying to sell the trademark or collect licensing fees, Teelio demanded that Shanda immediately stop using the trademark and destroy all products marked with "Long Zhi Gu."

Apple May Lose iPad Trademark in China

December 9, 2011,

iPad.jpgOrange County - On December 6, 2011, the Intermediate People's Court ruled that the Chinese company Proview Technology was the rightful owner of the trademarks "IPAD" and "iPAD" in China.

Proview originally attempted to manufacture a tablet computer in 2000 and obtained trademarks for the word "IPAD" and "iPAD"in the EU, China, Mexico, South Korea, Singapore, Indonesia, Thailand and Vietnam between 2000 and 2004. Apple, now famous worldwide for its tablet computer iPad, agreed to purchase from Proview Technology's parent company in 2006 the global trademark of the word IPAD for approximately $54,000.

However, after the purchase, Apple failed to file the necessary paperwork to transfer the rights in China and the Chinese Trademark Office rejected the application to transfer ownership of the trademark. Proview has since denied that the agreement included China. Apple then filed suit in the Intermediate People's Court that it owned the trademark but the Court ruled against Apple stating that they bore "a higher duty of care" to make sure that the "necessary procedures for the transfer of a trademark" were completed.

Since the ruling earlier this week, Proview has commenced the process of suing retailers of Apple iPad tablet computers in the Chinese cities of Shenzhen and Huizhou to take advantage of Apple's public embarrassment over the lawsuit and leverage its position for a large settlement. Any disruption to iPad sales in China could be devastating for Apple where they own 74% of the tablet computer market. Apple has the right to appeal the case but Proview has already filed suit against Apple for trademark infringement.

Proview, a company on the brink of bankruptcy before the case now finds itself as the beneficiary of a potential windfall. Attorneys for Proview have argued the reason for moving so quickly against Apple by suing retailers of iPad computer is "because Apple is a very influential company, no one wants to think they are being unreasonable. But in this case, they really are being unreasonable."

Research In Motion Loses Trademark Ruling for 'BBX'

December 9, 2011,

cellphones.jpgOrange County - The Canadian multinational telecommunications company, Research in Motion (RIM), has lost a major ruling in a trademark infringement battle with a small New Mexico software provider over use of BBX.

U.S. District Judge William P. Johnson ruled in favor of New Mexico-based Basis International by granting a temporary restraining order that will bar RIM from using the 'BBX' trademark for its new operating system at the DevCon conference in Singapore this week. By granting Basis' request for the temporary restraining order, the judge concluded that "the BBX trademark is identical to the mark which RIM is allegedly using to present its BBX product."

Basis' trademark infringement and unfair competition complaint, filed last month in Albuquerque, alleged that RIM had already infringed on the BBX trademark, therefore causing confusion among U.S. consumers and erosion of customer good will, by using the 'BBX' trademark to advertise its new platform at a San Francisco conference back in October, thus justifying the request for the temporary restraining order. Apparently, at the conference, RIM had revealed its version of the BBX platform, which consists of elements of its older BlackBerry operating system with its next generation QNX software. According to the complaint, Basis has been in the software business for twenty-six years, providing its BBX branded tools and software products to software application developers.

RIM had high hopes that the advanced capabilities of BBX would catapult the company back into the smartphone game, but since the judge's ruling, it has announced that it will change the name of its new operating system to the BlackBerry 10.

"BlackBerry 10 is the official name of the next generation platform that will power future BlackBerry smartphones," the company stated.

Research In Motion, headquartered in Waterloo, Ontario, Canada, designs, manufactures, and markets wireless solutions for the global cellular phone market. The company, founded in 1984 by Mike Lazaridis, has faced some recent setbacks. Most recently, RIM's stock plunged after analyst concerns that it was no longer a player in the smartphone industry. Its most recent struggle was a global service outage that left BlackBerry users without e-mail access for three days.

Oakland Raiders Suing Hamburger Chain for Trademark Infringement

December 9, 2011,

cheeseburger.jpgOrange County - The NFL's Oakland Raiders have filed a trademark infringement lawsuit against Nation's Giant Hamburgers, a Northern California hamburger chain.

According to the lawsuit, filed last week in a U.S. District Court in San Francisco, the Raiders allege that the hamburger chain is infringing on its "Raider Nation" trademark. Allegedly, Nation's has been running an advertisement on a billboard near the Oakland-Alameda County Coliseum, where the Oakland Raiders play their home games. The burger chain's billboard reads: "When Hunger Hits, Raid a Nation's." The advertisement is printed in silver and black, which happen to be the colors for the Raiders.

However clever the phrase may be, the Oakland Raiders are calling it "ambush advertising" and is accusing Nation's of capitalizing on its fame and fan base without permission or having to pay for it. According to the Raiders' complaint:

The "Raid a Nation's" slogan is an obvious reference to the famous Raider
Nation mark that identifies the Raiders and their loyal fans. The advertisement
Is easily visible to thousands of game day fans, as well as countless others who
Drive by the complex every day.

Al Davis would be so proud, given his litigious background with the NFL.

In addition to using a phrase similar to the "Raider Nation" trademark along with the team's colors, Nation's actually altered its cartoon hamburger logo, by adorning it with an eye patch, similar to the eye patch worn by the Raiders' logo character. Nonetheless, this made the Raiders all the more angry which they addressed in their lawsuit. "The unmistakable, overall message is that Nation's and the Raiders have a marketing or sponsorship relationship of some kind when, in fact, the opposite is true," the team said.

In their lawsuit, the Raiders are requesting that the judge ban Nation's from using the "Raid a Nation's" slogan. The team is reportedly seeking monetary damages for the infringement of its trademark, false advertising, and unfair competition.

Can You Trademark a Red Wax Seal on a Liquor Bottle?

December 7, 2011,

whiskey-in-glasses.jpgOrange County - Fortune Brands Inc., the owners of Maker's Mark, believes so. Maker's Mark, a high-end bourbon whiskey, adds a distinctive dripping red wax seal that coats the top of each bottle it produces. The company has trademarked the dripping red wax look since 1957.

However, in 1997, London-based Diageo North America and Casa Cuervo of Mexico, owners of Jose Cuervo, added a dripping red wax seal to their high-end bottles of "reserva" tequila so as to give it an artisan look. Fortune Brands commenced a lawsuit in 2003 against Diageo and Casa Cuervo for trademark infringement. A United States District Judge in 2010 entered an injunction order against Diageo and Casa Cuervo and any other company from using a similar look and seal. Diageo and Casa Cuervo appealed the District Court decision, andon December 2, 2011, the United States 6th Circuit Court of Appeals decided to hear the appeal.

Attorneys for Diageo and CasaCuervo argue that the use of a red wax seal is the only similarity between the two liquor bottles. After considering other factors, they argue that the dripping red wax does not cause confusion to the consumer. They note that the Maker's Mark bottle is square in shape and short in size, uses large black letters for labeling, costs $25 dollars a bottle, and contains bourbon whiskey. Meanwhile, the Jose Cuervo bottle is distinguishable because it is cylindrical in shape and tall in size, uses no labeling, costs $100 a bottle, and contains tequila.

However, attorneys for Fortune Brands believe that the crux of the case involves the dripping red wax seal and not the other distinguishing traits about the bottle or its contents. Bill Samuels, president of Maker's Mark states, "We hand dip and personalize every Maker's Mark bottle ... this has been our signature trademark since my mom dipped our very first bottle and always will be." Further, Maker's Mark spends $22 million annually on extensive advertising and marketing campaigns centered around the dripping red wax seal. Despite its appeal of the decision, Jose Cuervo ceased using the red wax seal six years ago.

R&B Group Blackstreet Sues Two Former Singers For Trademark and Copyright Infringement

December 6, 2011,

concert.jpgOrange County - R&B singers Teddy Riley and Chauncey Black doing business as Blackstreet Entertainment, Inc. have sued two former members and singers for hire, Mark Middleton and Eric Williams. The action, filed in a Virginia federal court, alleges that Middleton and Williams performed a series of concerts using a set of Blackstreet songs which they promoted under the name "Blackstreet" without the authorization of Blackstreet Entertainment. Blackstreet Entertainment further claims that customers were deceived and attended the concert expecting to see the original Blackstreet featuring Teddy Riley and Chauncey Black.

New York based singing group Blackstreet formed in 1991 by founding members Teddy Riley and Thomas Taliaferro. In 1996 they gained international attention with their number one hit, "No Diggity" and 1997's "Don't Leave Me." Riley and Black have been the only consistent members of the group since its inception.

Now, current Blackstreet members Riley and Black allege that former group members infringed Blackstreet's trademarks and copyrights when it promoted a European tour under the Blackstreet moniker. Blackstreet claims that Middleton and Williams not only used the Blackstreet name and a complete set of Blackstreet songs on the tour, but also used old group photos to promote and sell tickets. They allege that the entire set list consisted of karaoke style Blackstreet tracks and such use constituted copyright infringement.

Spokespeople for Blackstreet say that the Blackstreet name is still intact despite the group not having released an album since 2003. They claim Blackstreet still has a strong reputation for musical excellence and live performances. Riley and Black claim that they have owned the exclusive rights to the Blackstreet name since 1992 and have never authorized former members to use the name in order to promote a tour.

In order to prevail at trial, Blackstreet will need to show by a preponderance of the evidence that Williams and Middleton's use of the Blackstreet name, photos, and songs, created a likelihood of customer confusion. The Blackstreet civil action also includes a claim for copyright infringement.

CashRun Now a Registered Trademark in the U.S.

December 5, 2011,

cash_eu-money.jpgOrange County - CashRun, a leading provider of e-commerce fraud management and global payment solutions is now registered as a service mark in the United States, granted by the United States Patent and Trademark Office (USPTO).

CashRun was founded in 2007 with the goal of supporting businesses' needs for effective and affordable online payment solutions. Headquartered in St. Gallen, Switzerland, CashRun also has international offices in the United States, China, Germany, and Singapore. Justin Lie, managing director of CashRun, stated, "The recognition of CashRun as a trademark in the United States ensures our merchants benefit from officially backed solutions which comply with the high standards of excellence and quality required by this certification."

A service mark is a trademark that is used to identify a service, rather than a product. For service marks, either the SM or TM symbols may be used. When it is registered, the registered R symbol may be used.

CashRun has already been acknowledged as a registered trademark in the Republic of Singapore and the European Union. Its registration status in the European Union provides a level of protection for CashRun to offer its e-commerce solutions in all of Europe's twenty-seven member countries. CashRun has thus committed itself to complying with national and international trademark regulations in order to strengthen its brand globally and provide ongoing excellence to its clients.

Chick-Fil-A Sues Vermont Entrepreneur for Trademark Infringement

December 1, 2011,

cow.jpgOrange County - A Vermont artist/entrepreneur who is building his business around the slogan "Eat More Kale" is being sued for trademark infringement by Chick- Fil-A. The fast food chain alleges that Bo Muller-Moore's kale slogan is strikingly similar to its "Eat mor chikin" trademarked phrase.

Muller-Moore originally began printing the "Eat More Kale" slogan on T-shirts when his kale farming friend asked that he make $10.00 T-shirts for family and friends. The slogan and shirts became so popular with locals in Vermont, that Muller-Moore expanded his silkscreen business to include bumper stickers and other apparel items and sold them on the Internet.

In a letter to the judge, an attorney for Chick-Fil-A claims that the "Eat More Kale" slogan is confusingly similar to the restaurant chain's "Eat Mor Chikin" trademark and that it "dilutes the distinctiveness of Chick-Fil-A's intellectual property and diminishes its value."

The chicken chain's trademark is depicted by a poor-spelling cow that is holding hoof-painted signs reading "Eat Mor Chikin." The idea is that it is a chicken-only restaurant, and the cow wants to get the message across to eat chicken and not beef.

Apparently, five years ago, Chick-Fil-A, which has owned its trademark for years, sent a cease and desist letter to Muller-Moore, warning him to stop using his slogan. Eventually, the Georgia-based fast food chain quietly let the matter drop, which according to Muller-Moore, was a green light for him to register his trademark. Chick Fil A became aware of his intentions once more when he attempted to trademark the phrase last summer.

Now, a lawsuit is ensuing and Chick-Fil-A is determined to get the message across about protecting its intellectual property. The most recent cease and desist letter to Muller-Moore lists about thirty examples of attempts by other entities to use the "eat more" phrase that were withdrawn after Chick-Fil-A flexed its legal muscles.

However, Muller-Moore, 38, of Montpelier, Vermont, is not showing any signs of abandoning his slogan. In a statement, he said, "Our plan is to not back down. This feels like David versus Goliath. I know what it's like to protect what's yours in business," he added.