Orange County Trademark Attorney® Blog

June 2012 Archives

Kevin Durant Sued For Trademark Infringement Over Durantula Nickname

June 26, 2012,

basketball.jpgOrange County - Kevin Durant fans are known to refer to him as Durantula. The name became so popular that it soon began popping up on posters, pictures and even shoes. However, according to Mark Durante, the name Durantula belongs to him, and the use, regardless of how temporary, is a trademark infringement. To protect his trademarked name, Mark Durante is suing Panini, Nike and Kevin Durant over the use of the trademark. Durante is seeking an injunction to prevent the involved parties from using his trademarked term, as well as monetary damages.

Part of the goal of trademark protection is to protect specific terms, names or other words and to prevent a likelihood of consumer confusion. Mark Durante, a musician who plays guitar for groups such as Public Enemy, The Next Big Thing, KMFDM and others, claims that he has been using Durantula as his stage persona for over 20 years. His website Durantula.com has been in continuous use for ten years. Durante asserts that he took the time and paid the proper fees to have the name trademarked in order to assure its use would be protected. Consequently, he considers the name Durantula a very important part of his stage presence and vows to protect it to the fullest extent of the law.

Kevin Durant, a popular forward for the Oklahoma City Thunder in the NBA, claims that he never authorized, agreed to, or called himself by the nickname Durantula. However, despite his insistence, he has refused requests to stop using the name. In the wake of a showering of fans using the term Durantula as synonymous with his aggressive basketball persona, Durant has obviously accepted its use by fans and promoters. Autographed basketballs, posters and pictures are currently being sold by Panini America and are available on Durant's website. Mark Durante claims that his trademarked term Durantula is also being used by Durant on memorabilia and to promote a line of Nike shoes.

Anheuser-Busch Files Trademark Applications for Airport Codes

June 18, 2012,

beer-bottle-pouring.jpgOrange County - What do airport codes have to do with selling beer? To the confusion of many, Anheuser-Busch trademark attorneys filed paper work last week with the United States Patent and Trademark Office to trademark over forty different airport codes. The Applications for the famous beer distributor included the three-letter airport codes for airports in San Francisco (SFO), Los Angeles (LAX) and Boston (BOS), and many others.

Three letter airport codes, such as the ones Anheuser-Busch is attempting to trademark, are used worldwide and are also called "International Air Transport Association (IATA) Location Identifiers". The practice of universally using the three-letter airport codes started in the 1930's, when airline service exploded and towns without weather station codes needed identification. To solve this problem, the three-letter system was born. Since then, it has become much more convenient for pilots, controllers, travel agents, frequent flyers, computers and baggage handlers to say and write ORD than the O'Hare International Airport in Chicago, Illinois.

Experts are not certain of the exact plans behind the trademark filings for so many airport codes, but it would appear that the brewer intends to create dozens of brands geared toward local consumers. Anheuser-Busch now has six months to submit a Statement of Use for each of the airport codes. Earlier this year, Anheuser-Busch also filed Trademark Applications with the USPTO to trademark "314" and thirteen other city area codes. The government filing fee for each Application at least $275, so between the filing fees for the airport codes and those for the area codes, Anheuser-Busch has spent roughly $18,000 dollars.

Anheuser-Busch is the leading American beer retailer with a whopping 48.3 percent of sales in the United States. Its most popular selling beers, Budweiser and Bud Light, are also the top selling beers in the U.S. and are distributed through a massive network of over 500 independent wholesalers. Based in St. Louis, Missouri, Anheuser-Busch operates twelve breweries across the United States and prides itself in also being the top recycler of Aluminum for over 30 years.

Coach Wins Trademark Infringement Case While Awaiting Outcome Of Class Action Lawsuit

June 12, 2012,

keychain_rings.jpgOrange County - In a decision recently handed down by a federal jury, Siskiyou Buckle Company was ordered to pay $75,000 in damages to Coach, the popular leather goods manufacturer. The lawsuit, originally filed last year in New York, concerned trademark infringement of a key chain. The accessory featured an insignia that was a confusingly similar copy of the sideways "C" logo sold by the famous purse maker. The court handed down the order for damages along with an injunction preventing further sales of the offending products. The "knock-off" product was ordered from a Chinese manufacturer for Siskiyou's largest customer, The Hillman Group. The infringing products were sold to Wal-Mart and Lowe's Companies. Coach also sued Hillman and received an undisclosed settlement in that lawsuit.

Siskiyou Buckle Company is based in Medford, Oregon, and has been in the business of creating belt buckles, buttons, pins, fasteners, costume jewelry, toys and hobby goods for over 35 years. Siskiyou has produced its best selling belt buckles for such well-known names as Harley Davison, Elvis and General Motors. Despite its loss in court, Siskiyou denied any infringement of the Coach products and claims that it lost $131,000 dollars in the deal with The Hillman Group.

The win for Coach against Siskiyou comes on the heels of several significant class action lawsuits against the popular New York purveyor of purses. In 2008, Coach settled a class-action lawsuit for violating a California law by requiring customers to provide address, telephone number and email information for credit card transactions. In 2009, the leather goods company settled a class-action lawsuit for a federal securities violation.

The latest class action lawsuit was filed last year in United States District Court for the Western District of Washington in Seattle, and is still pending. The lawsuit alleges that Coach violated Consumer Protection Acts by attempting to force consumers to purchase only new products and only in Coach stores. Originally filed in February 2011, the lawsuit accuses Coach of systematically engaging in a campaign to suppress second hand sales of its handbags and other products on the popular websites Craig's List and Ebay.

The lawsuit further claims that Coach wrongly sent cease and desist letters accusing consumers of illegally using its trademarks and selling counterfeit goods. The New York law firm representing Coach threatened $2 million in damages if its requests were not complied with. Gina Kim, the initiator of the lawsuit, claims that Coach sent her a letter demanding that among other things, she discontinue selling Coach products, surrender all Coach merchandise, admit guilt, and send the company a $300 dollar check. Kim also claims that her Ebay account was deactivated and she was temporarily banned from the popular online auction website. Coach is awaiting the results of this latest class action lawsuit, as it will likely affect the manner in which its legal department pursues what it considers significant trademark infringement.

Angie's List Files Trademark Infringement Lawsuit Against Competitor ServiceMagic

June 8, 2012,

internet.jpgOrange County - The popular contractor and services review company, Angie's List, filed a lawsuit in federal court last week against its competitor ServiceMagic. The trademark infringement lawsuit alleges that its rival is illegally using sponsored links and purchased keywords owned by Angie's List. ServiceMagic is also being accused of using Angie's List trademarks in its web-based sponsored links and advertisements.

The complaint, filed in the U.S. District Court for the Southern District of Indiana, includes nine counts. Among other things, ServiceMagic is being accused of trademark infringement, disparagement and dilution, unfair competition and unjust enrichment. The Indianapolis based company is seeking an injunction and monetary damages for loss of revenue and possible irreparable harm to its reputation. A trial is expected in the upcoming weeks, with a decision most likely handed down in July.

Angie's List is a business review website that allows members to share experiences and give feedback on contractors and other service based companies. Based in Indianapolis and established in 1997, Angie's List owns four trademarks for its name alone. Considering itself the premier word-of-mouth network, its website is dedicated to consumers who wish to share real-life experiences regarding local service companies. Over 40,000 service reports are submitted each month describing response time, prices and quality of work. Though it does not claim to conduct background checks or licensing verification, Angie's list does have a staff dedicated to ensuring reviews are accurate and up-to-date.

ServiceMagic is owned by IAC, the owner of such web-based enterprises as Ask.com, Match.com and Vimeo. Located near Denver, Colorado, ServiceMagic considers itself the nation's leading website for connecting consumers with screened and approved local service professionals. The website ServiceMagic.com draws over 4 million consumer views per month. With over 80,000 costumer-rated service professionals, ServiceMagic's website can be used to find home improvement contractors, remodelers, cleaning services, handymen, landscapers and other home or business service professionals. ServiceMagic considers itself unique from Angie's List because its listed professionals carry a "Seal of Approval" and undergo a rigorous screening process. ServiceMagic also conducts criminal background checks and licensing verification for all of its listed professionals.

Jeremy Lin To Be Sole Owner of 'Linsanity' Trademark

June 4, 2012,

basketball.jpgOrange County - The various individuals who filed 'Linsanity' trademark applications with the U.S. Patent and Trademark Office back in February 2012 will be narrowed down to one remaining applicant. Jeremy Lin's trademark application for 'Linsanity' will be the only one granted by the U.S. Patent and Trademark Office.

Although many applications still show a 'live' status, the U.S. Patent and Trademark Office has issued office actions which state the reason for the refusals to anyone other than Jeremy Lin. An office action in one of the 'Linsanity' applications states, "Registration is refused because the applied-for trademark consists of or includes matter which may falsely suggest a connection with Jeremy Lin. Although Jeremy Lin is not connected with the goods provided by applicant under the applied-for trademark, the term LINSANITY has been so widely used in connection with Jeremy Lin that consumers would presume a connection to Mr. Lin if they see the term LINSANITY on the identified goods."

The popularity associated with New York Knicks point guard Jeremy Lin in February 2012 caused the frenzy that became known as 'Linsanity'. The Knicks guard went from being a bench player to ultimately saving the game on February 4, 2012 against the New Jersey Nets and contributed 25 points that resulted in a win for the Knicks. After this game several applicants filed applications to trademark the term 'Linsanity'. Jeremy Lin soon followed and is listed as the owner in the live trademark applications for 'Jeremy Lin', 'Linsanity', and 'JLin'.

Pamela Deese, Lin's trademark attorney stated of the U.S. Patent and Trademark's decision, "We're delighted" and "This is the right result." "It's not only Linsanity, but all Lin-related trademarks. Having a clean slate with rights in place makes it a lot easier to negotiate licenses and endorsements deals."

Lin, the first Taiwanese American to play in the National Basketball Association, has recently taken a medical leave hiatus from the NBA due to a tear in his left meniscus. Despite the recovery time from his knee injury, Lin is said to still be a part of the New York Knicks team even though his future with the Knicks has recently been questioned since Lin is a restricted free agent. Glen Grunwald, the General Manager for the New York Knicks, stated of the 23 year old, "We can keep him if we want him, and we do want to keep him, and I believe that Jeremy had a great experience here. I believe he wants to come back."

Either way, we can be sure that there will be more "Linsanity" in the future.