Orange County Trademark Attorney® Blog

August 2012 Archives

Furniture Co.'s Bogart Trademark Infringement Liability Remains In Play

August 28, 2012,

mattress.jpgOrange County - Ashley Furniture Industries Inc. was swatted down by a judge Tuesday in its attempt to net a summary judgment win on claims that it had violated trademarks owned by famed actor Humphrey Bogart's estate.

The Georgia federal judge allowed intellectual property holding company Bogart LLC's suit to proceed, denying Ashley's summary judgment motion in a lengthy opinion finding that "genuine disputes exist as to the material facts."

Bogart's estate sued Ashley in 2010 over three pieces of its "Bogart Ocean" collection of furniture introduced to the public in 2008. Bogart LLC owns the federally registered trademarks for the phrase "Humphrey Bogart" in relation to clothing and furniture, among other uses, and has licensed the use of the "Bogart" trademark and Humphrey Bogart's publicity rights on more than one hundred occasions to a wide variety of businesses, Judge Clay D. Land's opinion said.

In each of those licensing deals, third-party licensees paid for the use of the estate's intellectual property through a royalty rate or percent of sales accompanied by an advance or guarantee, according to the opinion.

The estate entered into a licensing agreement with furniture retailer Thomasville in 2001 to name and brand a line of furniture, including residential sofas and chairs, ultimately branded the "Bogart Collection," which has yielded royalties for the estate amounting to more than five million dollars between 2003 and the end of 2011, the judge said. The estate has not entered into any other licensing agreement with a furniture company.

Ashley maintains that its Bogart Ocean collection is not intended to refer to Humphrey Bogart, but rather to the town of Bogart, Georgia, the judge said.

Ashley does not have licenses for the use of third-party names or brands associated with its products, and claims that it does not use celebrity endorsements to sell its products. Bogart LLC disputed that assertion, though, pointing to evidence that Ashley has used celebrity endorsements and what appear to be celebrity names to sell its products.

In support of its contention, the estate pointed to the names of Ashley furniture collections including Gable-Mocha, Brando-Cocoa, Newman-Oyster and Presley-Café.

The Bogart Ocean line was not successful and was discontinued in 2009, according to the judge.

Steelers Drop "Terrible Towel" Trademark Suit

August 23, 2012,

football-field-lambeau.jpgOrange County - The Pittsburgh Steelers have put to rest a trademark infringement suit against a man making knockoffs of the team's "Terrible Towel" merchandise.

The Steelers and Nicholas Rossi agreed to an "amicable resolution" for the matter at a preliminary injunction hearing on Friday, Judge Arthur J. Schwab said in an order closing the case Monday.

The Steelers and the AVS Foundation, a charitable nonprofit supporting the Allegheny Valley School for intellectually and developmentally disabled individuals, sued Rossi earlier in August. AVS owns the Steelers' Terrible Towel trademarks, and the sales of trademarked merchandise supports the school's operation.

The marks have become widely recognized by and famous among the general public due to more than 35 years of use in connection with the Pittsburgh Steelers football team; their visibility to fans viewing Pittsburgh Steelers football games in person or on television, in Pittsburgh and other cities; media articles about "The Terrible Towel®"; their distribution through numerous channels of commerce, and the stature of Pittsburgh sports writer and Steelers broadcaster, Myron Cope, who had the idea of "The Terrible Towel®", the complaint says.

The Steelers hold an exclusive license to market items bearing "The Terrible Towel®" marks, according to the complaint.

Rossi and his businesses were allegedly selling an Italian language knockoff of the Terrible Towel, marketing it as "Italy's official" Terrible Towel, via the website of Hockey Sandwich Sporting Goods of Long Beach, California, as well as eBay. The sales were unaffected by the receipt of the Steelers' cease and desist letters, the complaint says.

The Steelers asserted claims for trademark infringement, unfair competition, dilution, and Racketeering Influenced and Corrupt Organization Act violations.

The establishment of the Terrible Towel as a Steelers icon was brought about by the efforts of former radio broadcaster Myron Cope during the 1975 playoffs, in which the Steelers went on to win Super Bowl X against the Dallas Cowboys.

John Geils Jr. Sues His Own Band For Trademark Infringement

August 15, 2012,

concert.jpgOrange County - Historically, the music business is a prime industry for trademark infringement lawsuits. For bands that sell tickets and make money based on the recognition and popularity of a band name, the ownership of that name can prove to be invaluable. And when bands or individual band members use a name without authorization, lawsuits usually follow. Such is the case with John Geils Jr. who has sued the other members of his band which is named after him. Geils Jr. announced through representatives that he has filed a complaint against The J. Geils Band for trademark infringement and deceptive business practices after the band decided to tour without him.

The lawsuit was filed in U.S. District Court in Boston and claims that Geils owns the J. Geils Band trademark. The defendants, Peter Wolf, Seth Justman, Magic Dick and Danny Klein are accused of "seeking to misappropriate and steal" the band name that has been in use since the 1960's. Apparently ownership of the band's copyrights are not in issue. The J. Geils Band is famous for its 1980's hits "Centerfold" and "Freeze Frame". Following a resurgence of 1980's music, many bands from the eighties have found a renewed popularity in recent years and have started touring again. With plans to start touring this year, the band began to argue about who actually owned the trademark rights to the band's name.

The Boston Globe reported that Geils was granted the trademark rights to the band name in 2009. According to the United States Patent and Trademark Office, a registrant company named Francesca owns the rights to the band name for use with records, musical sound recordings, downloadable musical sound recordings, audiovisual recordings featuring music and musical entertainment, downloadable audiovisual recordings featuring music and musical entertainment, clothing, shirts, t-shirts, entertainment services, and periodic live musical performances. However, the band claims that Geils registered the trademark without consulting the other band members. A separate trademark application was filed for The J. Geils Band this year by T&A Research & Development Corp but it recently received an Office Action due to the prior registration and very likely will not register.

Tennessee Pastor Sent To Jail Over Trademark Infringement Lawsuit

August 3, 2012,

church.jpgOrange County - A Tennessee Pastor was arrested for violating a court order related to a trademark infringement lawsuit with the Seventh-day Adventist Church. Walter McGill was apprehended in Loma Linda California on July 13th and turned over to San Bernardino County Law enforcement.

McGill initially drew the attention of the Seventh-day Adventist Church when he named his small Tennessee church "Creation Seventh Day Adventist Church". At the same time, McGill claimed that he was an Adventist pastor. However, after various checks, this claim could not be substantiated by the Seventh-day Adventist church. Consequently, legal counsel for the church sent a cease and desist letter in 2005 asking McGill to discontinue using the Seventh-day Adventist name on his church buildings and associated websites. McGill took no action. A year later, the church filed a trademark infringement lawsuit against McGill in Tennessee District Court. The trademark was registered with the United States Patent and Trademark Office in 1981 and all uses must be approved by the world church headquarters, which keeps a detailed list of all approved uses.

During the course of litigation, McGill declined to attend a court-ordered settlement conference and the case was subsequently dismissed. McGill appealed his case to the Sixth Circuit Court of Appeals claiming that his was not a case of trademark infringement, but rather it was a violation of the Religious Freedom Restoration Act. The court ruled that the act did not apply and McGill lost his appeal. Shortly thereafter, McGill filed a writ of certiorari to have his case heard by the Supreme Court. This request was also denied. During the course of McGill's appeals, the court ordered the removal of signs using the Seventh-day Adventist trademark and sent marshals to McGill's property to enforce the order. The Tennessee pastor immediately put the signs back up.

In May 2012, McGill was found to be in contempt of court for his failure to comply with the court's order to remove the offending signs and a warrant was issued for his arrest. McGill was subsequently arrested at Loma Linda University in Loma Linda, California. Seventh-day Adventist officials have emphasized that McGill was not arrested for freedom of speech or religion, but for his violation of a court order to cease his unauthorized use of the Seventh-day Adventist trademark.