Orange County Trademark Attorney® Blog

January 2012 Archives

Xylem Group Files Plumbing Fixture Trademark Infringement Lawsuit

January 24, 2012,

plumbing-bath-faucet-fixture.jpgOrange County - Xylem Group LLC, a manufacturer of innovative bath and plumbing fixtures, has filed a trademark infringement lawsuit against ITT and Xylem Inc., a fluid technology spin-off company of ITT.

The lawsuit contends that by naming the spin-off Xylem Inc., ITT is infringing on the Xylem Group's registered trademark and causing confusion among consumers. Xylem Group LLC has owned the registered trademark XYLEM and has been using it in the plumbing marketplace since 2005.

Xylem Group's founder and president Hal Weinstein insists that the blatant infringement is a David vs. Goliath battle, where a large corporate giant (ITT) is using its size and power in the marketplace to intimidate his much smaller business.

"There is a lot of confusion in the marketplace, which is making it difficult for Xylem Group LLC to get its message out," stated Weinstein. "Who we are, what we are, and what we do is being undermined by ITT," he added. Weinstein also said that Xylem Group LLC has been documenting instances where ITT's trademark infringement has adversely affected its business by causing confusion in the marketplace. He said his small company will aggressively proceed with legal action until ITT stops using its trademarked XYLEM name and will also seek monetary damages.

Adding ammunition to Xylem Group's trademark infringement claims, Weinstein cited a November 2011 office action from the United States Patent and Trademark Office that refuses ITT's registration request for the XYLEM trademark on grounds of likelihood of confusion.

In its response to the lawsuit, ITT insists that its use of the XYLEM trademark does not infringe on Weinstein's trademark since they are used for different product lines. Weinstein, however pointed out that ITT has indeed been involved in the "finished goods" side of the plumbing industry through its past ownership of Grohe AG, an international manufacturer and supplier of sanitary fittings. Weinstein further indicated that ITT has published press releases and filed government documents stating its intention to sell water flow devices like pumps, valves, and fittings under the XYLEM name.

Additionally, Weinstein confirmed that the types of companies that Xylem Group LLC uses to distribute its pumps, valves, pipes, and fittings directly compete with ITT in the plumbing industry.

If Xylem Group LLC has deep enough pockets to weather the litigation storm, it appears that it has a very good case. With evidence of the USPTO office action and documentation of marketplace confusion, Weinstein's company has lots of ammunition.

Sony Seeks to Trademark Kolaveri Di

January 16, 2012,

sony.jpgOrange County - Sony Music is reportedly applying for the trademark rights to lyrics in the Indian superhit "Kolaveri Di" so it can possibly use the world-famous "Why this Kolaveri Di" as a brand and to stop others from doing so.

Sony Music Entertainment in India, which recorded the Tamil-English song that has gone viral around the world thanks to YouTube, filed the trademark application last month. The application, filed under Class 9 and Class 41, will allow Sony to launch products such as cassettes, compact discs, and SD cards, as well as film and non-film entertainment content and talent discovery programs branded "Why this Kolaveri Di". By doing so, Sony also eliminates the possibility of any other companies capitalizing on the popular phrase.

The song's first line "Why this kolveri di?" translated to the English language to mean "Why do you have this murderous rage against me?" However disturbing that may sound, the 21-year-old composer Anirudh Ravichander, insists that the song is a "lighthearted" composition about failed love. Apparently, the song is from the soundtrack of the upcoming Indian film "3 Idiots" and since its November release, has become the most searched YouTube video in India.

Amarendra Singh, who heads the client services at the Indian advertising firm Grey Bangalore, said that it would make sense for Sony to release merchandise and a line extension to the song once it becomes a trademarked brand. Singh stated, "They could launch lesser known artists in an album titled Kolaveri 2, and the Kolaveri brand will ensure that the album gets sold out."

The song "Kolveri Di" has become a case study in Indian intellectual property law about how viral marketing on the Internet of a brand, film, or song can create a cult following just days after being released online. The application to trademark the first line lyrics of the song will be the first for India. Although lyrics to a song have never been trademarked in India, advertisement punch lines, quotes, and television commercial jingles have.

It will be interesting to see how Sony decides to use the trademark. As fads come and go in a world where consumers are always looking for something new, plans to develop Kolveri di into a brand may depend on the success of the movie. It was still a logical step for Sony if it does decide to expand it into a brand.

Will Hasbro's 'Transformers' Stand Up in Trademark Infringement Battle?

January 9, 2012,

toys_transformers.jpgOrange County - Last month, American board game and toymaker Hasbro filed a trademark infringement lawsuit against Asus Computer International over use of the word "Transformer" for its new high end tablet/laptop hybrid computer dubbed the "Transformer Prime."

For the past three decades, Hasbro has fascinated children worldwide with its line of alien toy robots called "Transformers." The line of popular toy robots quickly expanded to comic books, an animated television series, and feature films. Now, the Pawtucket, Rhode Island manufacturer is claiming that the defendant's use of its trademark will "undermine the decades of time and millions of dollars" that Hasbro has invested into "Transformers."

Not surprisingly, Asus responded to the trademark infringement complaint with the argument that consumers will not likely be confused between a tablet computer and a child's robot toy. However, Hasbro has a long history of vehemently protecting its intellectual property, with many interesting and often amusing cases to prove it. Last year, the toymaker sent the Senate campaign for Sharon Angle a cease and desist letter because the Nevada Republican never asked permission to use the rights to Monopoly for its "Harry Reid Amnesty Game" website.

As for the Asus Computer case, Hasbro was quick to flex its legal muscles and not only filed its trademark infringement complaint just before Christmas, but also filed a motion for expedited discovery and a preliminary injunction motion. Asus, which first displayed its tablet computer at a trade show last January, soon after received a cease and desist letter from Hasbro but then heard nothing for nearly a year. Caught off guard by the lawsuit, Asus trademark attorneys submitted court papers with the intention of slowing down the legal proceedings, which it says were filed abusively by Hasbro during the holiday season so as to thwart a response.

Asus Computer is arguing that Hasbro just filed to register the "Transformers Prime" trademark in April 2010, which the United States Patent and Trademark Office has yet to grant. Asus added that the toy manufacturer has yet to sell any merchandise under the unregistered trademark, which according to Hasbro will take place this March when the toys are completed.

Although being able to prove the likelihood of confusion argument will be challenging, Hasbro did cite some tech bloggers who used the launch of the new tablet computer as a reason to nostalgically reminisce about their childhood days of playing with Transformer robots. Asus will likely argue that its use of "transformer" is purely descriptive. After last year's cease and desist letter, the computer company responded by telling Hasbro that the trademark didn't cover Asus' use of the word to demonstrate to consumers the functions of its tablet.

Skee-Ball Manufacturer Sues Williamsburg Skee-Ball Bar for Trademark Infringement

January 5, 2012,

skeeball.jpgOrange County - Skee-Ball Inc., the Pennsylvania-based manufacturer of the popular arcade game Skee-Ball, is suing Eric Pavony and Evan Tobias, owners of the Full Circle Bar, for trademark infringement. It appears that the trademark infringement claim is stemming from the Full Circle Bar's popularity of its Brewskee-Ball League.

The trademark infringement claim comes as a surprise to Full Circle owners. Founded in 2005, the Full Circle Bar obtained permission from Skee-Ball Inc. in a meeting with the company's CEO to use the Skee-Ball games at its establishment. The bar became such a popular hangout for the arcade game-loving locals, that Full Circle also founded a "Brewskee-Ball" League that same year.

According to court documents, Skee-Ball Inc. contacted Pavony and Tobias in 2010, expressing interest in working with them and further developing the popularity of Brewskee-Ball. Subsequently, the two parties entered into a confidentiality agreement to discuss the potential collaboration, however, just a month later, Pavony and Tobias were served with a cease and desist letter. According to the letter, Skee-Ball Inc. claimed that Pavony and Tobias were violating its trademark on the word skee-ball.

The attorney representing the owners of the Full Circle bar maintains that the bar "is not infringing on any valid Skee-Ball trademark." He added, "And there is no other way to describe a skee-ball machine that a normal person would understand, except to call it a skee-ball machine. So to have a company basically claim that you can't call the machines you own by their name is not legally proper, and it's not even good business."

Skee-ball, one of the first ticket redemption games, is similar to bowling only it is played on an inclined lane with its player aiming to get the wood ball to fall in the hole rather than knock down pins. The objective in skee-ball is to collect as many points by landing the balls into the designated point value holes. The tickets awarded in the game are redeemed to purchase stuffed animals and other novelty items at the arcade.

In response to the complaint, Full Circle's attorney has filed a motion to have the lawsuit dismissed, arguing that the bar's use "constitutes fair use...particularly because Full Circle has only owned and used skee-ball games manufactured by Skee-Ball Inc.."

The extent of damages that Skee-Ball Inc. is seeking is unclear, as is the reason for the trademark infringement complaint while in the midst with the Brewskee-Ball collaboration. A source familiar with the case said that the cease and desist letter came shortly after Skee-Ball Inc. hired a marketing consultant based in San Francisco, where the lawsuit was eventually filed.