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Big Money at Stake Over "12th Man" Trademark in Football

February 13, 2014,

football.jpgOrange County - Lately, it has been hard to miss the reigning Superbowl Champion Seattle Seahawks' "12th Man" signs, banners and cheers across TV, the internet, and social media. Popular as it may be, the term famously associated with the Seahawks was originally coined by the student body of Texas A&M University, with the school going so far as to federally register the "12th Man" trademark in 1990. Now, with the Seahawk's recent success and accompanying use of the phrase, licensing negotiations between the athletic organizations are heating up.

According to longstanding Texas A&M history, the term "12th Man" came about in 1922 when head football coach Dana X. Bible called an A&M basketball player, E. King Gill, out of the stands to suit up to play. Though Gill never ended up playing a single down for the Aggies, his story carried on for years as from that point on, the student body has referred to themselves as the "12th Man" on the field.

By the early 2000s, when Seattle Seahawks fans regularly began referring to themselves as the 12th Man, Texas A&M took note. In 2006, the university commenced a lawsuit against the Seahawks for trademark infringement. The teams ended up settling, with the Seahawks paying a $100,000 lump sum to Texas A&M for its use of the trademark, along with a five year license, renewable for an additional five year term, at a fee of $5000 per year. That deal included a variety of limitations, including a geographical restraint that prevents the Seahawks from using the term anywhere outside of Alaska, Hawaii, Idaho, Montana, Oregon, Utah and Washington.

With the deal ending in 2016, several reports are indicating that the Seahawks are already in talks with Texas A&M to ensure extension of the license. Since the original agreement was made before the takeoff of social media, where much of the 12th Man frenzy has taken place, it is unclear how the teams will work out the problem of geography. While Texas A&M has demonstrated its dedication to keeping the trademark in effect in Texas and its surrounding areas, it may be facing a problem of enforceability now that the Seattle 12th man has become so popular.

Additionally, given the current contract's provision prohibiting the Seahawks from using the 12th Man on fan merchandise, if Seattle wishes to really cash in from the 12th Man retail market, they are going to have to pay up. Initial chatter surrounding the settlement discussions put the license renegotiation fee in the six figure range.

Ford and Tesla Clash Over "Model E" Trademark

January 10, 2014,

ford.jpgOrange County - Two of the world's most well known car manufacturers are going head to head over the trademark right to the name "Model E." Records on file with the United States Patent and Trademark Office (USPTO) show that on August 5, 2013, Tesla Motors, Inc. filed a trademark application for "Model E," in several classes of goods, including that for " Automobiles and structural parts therefor." This was enough to sufficiently stir up Ford's attorneys and Ford, in turn, filed its own application for the same name on December 3, 2013.

While Ford never actually made a Model E automobile, they may have a viable claim to a historical right in the name, due to its classic formula of naming cars "Model" with a single letter following. Ford historically rolled out the Model T in 1908, which was the first car to ever be produced for the masses by assembly line. Besides the most famous Model T, Ford also produced the Models A, B, C, F, K, N, R, S, T and Y between the years 1903 and 1938.

Oddly enough, while Ford never officially used the "Model E" moniker as a name for an automobile, Tesla also has yet to formally announce that it will be using the name. The public has been awaiting the unveiling of the new Tesla model to follow the widely popular Tesla Model S. With relatively little information about the upcoming model, car enthusiasts and bloggers simply started referring to the yet-to-be seen Tesla as the "Model E". The name caught on and so did Tesla, which despite filing several trademark applications for the "Model E," have yet to announce that the next addition to the Tesla lineup will indeed bear the moniker.

The upcoming Tesla "Model E" is speculated to be a much more affordable version of the successful Model S, set to compete with the BMW 3-series and Mercedes C-Class, at a price of about $35,000. The much anticipated "Model E-veryone", as some have begun calling it, will be the fourth production car by the California-based car company. Whether or not Tesla is able to win out the fight against Ford for the "Model E" trademark, it appears that Tesla enthusiasts will be ready to buy it when it finally arrives.

Cardinals' Rally Squirrel Stirs up Trademark Fight

October 30, 2013,

squirrel.jpgOrange County - The St. Louis Cardinals are in the midst of a dispute over the trademark of its popular "Rally Squirrel." The team is trying to knock out a federal trademark application filed with the United States Patent and Trademark Office (USPTO) by a St. Louis area business owner named Phil Rideout. Rideout claims that he filed the application with the intent of building a sports brand around the name, but the Cardinals have opposed the filing, claiming that the name has become a fundamental part of the ball club's identity.

Back in 2011, when the Rally Squirrel was at the peak of its popularity, Rideout was one of many local businesspeople who cashed in on the frenzy, manufacturing and selling squirrel themed merchandised to Cardinals fans. At the same time, the St. Louis Cardinals themselves created and sold Rally Squirrel T-shirts and provided fans with squirrel rally towels at games.

Though its opposition is still lingering with the USPTO, the Cardinals have shown no sign of giving up, with one its representatives recently commenting that the "Cardinals Rally Squirrel is alive and well." The parties are currently trying to work out a settlement, but the fight seems stalemated for the time being, with Rideout claiming that he was the first user of the term and the Cardinals countering that he is attempting to unjustly profit from the goodwill of the team and its association with the furry creature.

The now famous rally squirrel first appeared back in 2011, during that year's National League Division Series between the Phillies and the Cardinals. During game three of the series, the squirrel popped out in the outfield and interrupted play as it darted across the field. In game four, the squirrel appeared again and caused a distraction among players, before leaping into the stands.

From that point on, the tiny rodent was dubbed the "Rally Squirrel" and became the unofficial mascot of the St. Louis Cardinals, receiving much media attention by players, commentators and fans alike. The Cards ended up winning the world series that year and the Rally Squirrel has remained a fan favorite ever since, with his own Twitter account, T-shirts and merchandise. He is even featured as a life-sized mascot on the field at Busch Stadium alongside Fredbird, the cardinal bird mascot.

Truce between Apple and Amazon over Trademark for "App Store"

July 11, 2013,

apple-store.jpgOrange County - A judge in Northern California Federal Court on Tuesday dismissed a case between technology giants Apple, Inc. and Amazon.com, Inc. over trademark infringement claims after the two sides reached a settlement agreement.

The conflict stems from Amazon's use of the term "appstore" in its marketplace of programs for use witg Google's Android cell phones and Amazon's Kindle Fire. Amazon originally used "Amazon Appstore for Android," to refer to its online store, but upon introduction of the Kindle Fire, Amazon dropped use of "for Android." This switch prompted Apple to take legal action.

Apple originally filed its complaint in 2011, alleging that it had the exclusive right to the term APP STORE.

Apple, based in Cupertino, Calif., first filed a trademark application for APP STORE in July 2008, which the U.S. Patent and Trademark Office approved in 2010. Microsoft Corp. then filed an opposition to the application, so registration of the trademark is still pending based on the outcome of the civil trial between Apple and Microsoft.

Apple argued that it originally coined the term "app store" in relation to its innovative online store for applications to download onto iPhones, iPads, and iPods that it introduced in 2008. Since then, Apple's competitors, such as Amazon, have introduced similar marketplaces for application downloads. Apple asserted in its complaint that Amazon's use of "appstore" constituted false advertising, leading consumers to believe that Amazon's virtual store was associated with its own.

Seattle-based Amazon asserted in response to the complaint that the term "app store" had become generic, and that it was frequently used by business participating in the app store marketplace. The company further argued that consumers understood the differences between the app stores for different platforms, and would not be confused by Amazon's use of "appstore."

U.S. District Judge Phyllis J. Hamilton ordered the two parties to begin mediation earlier this year. The two sides reached an agreement on June 28, as Apple agreed to a covenant not to sue Amazon over this matter. Judge Hamilton dismissed the case on July 9, citing the agreement between the two corporations.

The case was originally scheduled to begin trial next month.

Kraft's Use of TOPPERS Alleged to be Trademark Infringement

June 17, 2013,

Cheese.jpgOrange County - A fierce battle is underway between the nation's top cheese producers over the rights to the term 'Toppers'. Saputo Cheese USA, Inc. holds the U.S. Trademark for 'Toppers' and the company claims that Kraft Food Group, Inc. infringed on its trademark by using the same term in its product description.

Saputo, a U.S. subsidiary of the Canadian company by the same name, filed a lawsuit in federal court in the Northern District of Illinois against the snack food giant on June 7th. Saputo claims it has used the term TOPPERS continuously since 1996, and has held U.S. Trademark Registration Number 2,330,529 since 2000.

The alleged infringement began in late 2012, when Kraft introduced its Velveeta brand 'Toppers', which are microwaveable pouches of Velveeta cheese product. The new product is designed for use as a single-serve nacho cheese dip and comes in two varieties, Queso Blanco and Original.

The use of 'Toppers' by Velveeta, an Illinois-based corporation owned by Kraft, is particularly damaging, claims Saputo. The company claims that it has developed a reputation for quality cheeses under its TOPPERS label, and argues that the term's use by Velveeta will cause irreparable damage to the reputation of the brand.

Saputo has utilized its 'Toppers' trademark in its Stella Toppers cheese brand, described as Artisan-Style Toppings, with products including Fresh Mozzarella, Parmesan, and Blue Cheese. The company fears that if customers believe the Velveeta 'Toppers' product is associated with the Stella Toppers cheese, it will damage the reputation of Saputo Cheese.

Lawyers for Saputo sent a cease-and-desist letter to Kraft on May 23rd, demanding that the company immediately stop all use of the term 'Toppers'. Kraft's counsel stated in its email response on May 31st that it would investigate the matter. To date, the company has not stopped use of the trademark that Saputo claims is infringing.

In its lawsuit against Kraft, Saputo cites trademark infringement as well as false advertising, unfair competition, and violation of the Uniform Deceptive Trade Practices Act under Illinois law. The company is also seeking damages, including injunctive and monetary relief.

Viacom May Get Dismissal From SpongeBob Uke's "Flying V" Guitar Trademark Lawsuit

May 21, 2013,

guitar-gibson.jpgOrange County - Last December, Gibson Guitars, Inc. sued Viacom Inc. and John Hornby Skewes & Co. Ltd. for trademark infringement related to the Gibson "Flying V" guitar model. John Hornby Skewes & Co. is a worldwide distributor of music merchandise since 1965 and is based in the United Kingdom.

The dispute began when John Hornby Skewes approached Viacom for a license to use the SpongeBob SquarePants trademark for a new novelty line of guitars, ukuleles, and related accessories. The licensing agreement was drawn up and signed allowing John Hornby Skewes to use the SpongeBob trademark and logo on musical instruments.

Thereafter John Hornby Skewes began selling a ukulele that looked similar to Gibson's famous "Flying V" guitar model, initially released in 1958. Gibson currently owns the FLYING V trademark, Reg. No. 1,216,644 for guitars.

When Gibson sued Viacom and John Hornby Skewes for trademark infringement, Viacom countered the lawsuit by filing a motion to dismiss itself from the lawsuit stating that it had no say whatsoever in decisions made by John Hornby Skewes pertaining to the designs or shapes of the instruments.

Last week U.S. District Court Judge Dean D. Pregerson made it clear that he tends to agree. Although Judge Pregerson is leaning toward dismissing Viacom from the case, he has not yet rendered his final decision but has made statements to indicate he is "inclined" to grant the motion.

Gibson's attorney tried to sway the judge by pointing out that the licensing agreement gives Viacom the right to approval of all released products under the license. However, Judge Pregerson does not believe that Viacom should be responsible in the way that Gibson is requesting. In this instance, Judge Pregerson called Viacom a "passive licensor" who played no part in the instrument body designed by John Hornby Skewes.

Gibson believes, at least according to its original complaint, that Viacom and John Hornby Skewes intentionally tried to mislead the public into thinking that the SpongeBob ukuleles were made by Gibson. Gibson alleges that both Defendants "made significant profits from it."

The Complaint also requests that Viacom be ordered to hand over all infringing merchandise and pay over $1 million in statutory damages. According to Viacom's trademark attorneys, the only "Spongebob" ukeleles sold in the United States were the ones purchased by Gibson's counsel.

"See Better Live Better" Trademark Generic According to Bausch & Lomb

April 16, 2013,

eye.jpgOrange County - Bausch & Lomb Inc., well-known optical innovators since the early 1900's, recently filed a counterclaim seeking cancellation of a trademark in a lawsuit in which Bausch & Lomb was sued for trademark infringement. The trademark at issue is "See better Live Better".

The Plaintiff in the lawsuit is Stuart J. Kaufman, M.D., a Florida Ophthalmologist who owns SEE BETTER LIVE BETTER U.S. Trademark Registration No. 3,917,064 for physician services in the field of ophthalmology. Mr. Kaufman is seeking injunctive relief as well as damages from Bausch & Lomb's use of the phrase "See better. Live better" in advertising and on its web site.

The original complaint against Bausch & Lomb was filed in February. In response to being sued, Bausch & Lomb decided to file the counterclaim against Dr. Kaufman asserting that SEE BETTER LIVE BETTER is a generic term in the industry of eye care and therefore the trademark should be cancelled by the U.S. Patent & Trademark Office. In the counterclaim, Bausch & Lomb states that many others in the eye care industry are using the slogan or similar slogans and therefore "No one party should have exclusive rights to this popular phrase." In its counterclaim Bausch & Lomb states that "See Better Live Better is generic for eye services that help people see better so that they can live better."

While it may be a stretch to say that the trademark is inherently generic, Bauch & Lomb can still be successful in cancelling the trademark if it can prove that it is in widespread use. Examples of trademarks that became generic over time are ASPIRIN and CELLOPHANE. To support its claim that the trademark has become generic, the counterclaim lists many other uses of the trademark including uses by ophthalmologists that allegedly used the slogan prior to Mr. Kaufman. This is somewhat of a position pill argument in that Bausch & Lomb is arguing that it also is not entitled to trademark protection in the slogan. Considering this, it may be advisable for Bausch & Lomb to cease use of the phrase regardless of the merits of the claim.

Dr. Kaufman is accusing Bausch & Lomb of "reverse confusion." In other words, he is alleging that the public will believe that Bausch & Lomb is the true owner of the trademark which will lead the public to believe that Mr. Kaufman is the infringer rather than Bausch & Lomb.

Diet Food Companies Clash over SLIM-FAST and SLIMFUL Trademarks

March 26, 2013,

weight_scale.jpgOrange County - Unilever NV and International IP Holdings, LLC are in a trademark war, debating whether International IP Holdings' SLIMFUL trademark used in relation to diet foods infringes Unilever's SLIM-FAST trademark.

On March 18th, International IP Holdings filed a lawsuit against Unilever subsidiary Conopco, Inc. in Michigan federal court seeking a declaratory judgment that Conopco has no grounds to preclude it from using the SLIMFUL trademark.

"Conopco does not own a trademark registration for the term 'Slimful,' it has never used the term as a trademark to identify the source of any product, and the term 'Slimful' does not appear anywhere on Conopco's products," Internationbal IP Holdings' complaint said.

International IP Holdings claimed that Conopco gave it notice in mid-February that the Slimful product packaging infringed the Conopco's Slim-Fast meal replacement trademarks and trade dress. International IP Holdings argued that its packaging did not infringe Conopco's trade dress, as it had used significantly more yellow than red to distinguish its product from Slim-Fast. International IP Holdings also claimed that its packaging has other features, such as the typeface and artwork, that are significantly different from what is used on the Slim-Fast bars.

The day after International IP Holdings filed its complaint for declaratory relief, Unilever fired back by filing a lawsuit in New York federal court, claiming that the Slimful products infringe its trademarks and trade dress.

Unilever said in its complaint that Slimful's packaging uses "simulations, confusingly similar variations, or colorable imitations" of the Slim-Fast packaging and that the company has blatantly copied the Slim-Fast trade dress.

Unilever also claims that International IP Holdings filed an application for SLIMFUL even though it had knowledge of the SLIM-FAST trademark and the fact that it has been in use since 1977 on billions of dollars worth of meal replacements and other diet products. Unilever also alleged that International IP Holdings has made false and misleading claims about its own products.

International IP Holdings responded to Unilever's lawsuit on Thursday with a motion to dismiss, claiming that it had filed its claim in Michigan first and that the case was not linked to New York and therefore the New York federal court does not have jurisdiction over the matter.

Tiffany Sues Costco for Trademark Infringement over Engagement Rings

February 19, 2013,

diamond_ring.jpgOrange County - Tiffany & Co. filed a trademark infringement lawsuit against Costco Wholesale Corp. claiming that the discount retail giant sold unauthorized diamond engagement rings with the Tiffany brand name.

The high-end jewelry maker claimed that it discovered Costco was using the Tiffany name to market and sell diamond engagement rings at its various retail locations across the United States through an internal investigation.

"Costco was able to sell... engagement rings falsely identified as 'Tiffany,' and thereby unlawfully trade on Tiffany's goodwill and brand awareness to increase its own sales," the complaint said.

Tiffany claimed that Costco's use of the Tiffany brand name harmed the high-end jewelry retailer by associating its high-end name with a budget retail chain. Tiffany also claimed that Costco purposely attempted to evade detection of its infringement by only selling and marketing the unauthorized Tiffany-branded engagement rings in stores and not promoting the rings online.

"The only place the Tiffany trademarks were displayed were on point of sale signs within a glass case in the jewelry departments of Costco warehouse stores, making them visible only to Costco members shopping for engagement rings in particular stores where the rings were displayed," Tiffany said.

Tiffany claims that Costco's use of its trademark in conjunction with the engagement rings it sold mislead customers to believe they were buying genuine Tiffany rings and caused them to see Costco as a retailer of fine jewelry products.

"Since these rings themselves were not Tiffany, the counterfeits made other non-branded jewelry in the same display case appear more valuable by comparison since those other items were, in fact, no different than what was falsely labeled as Tiffany," Tiffany said.

Tiffany addressed the alleged infringement with Costco in December and Costco agreed to cease using the Tiffany name in all of its store locations. However, Tiffany is still seeking Costco's profits from selling the alleged counterfeit goods, treble damages, and an order requiring Costco to make a public statement regarding its misconduct and to notify all purchasers of the rings that they had not bought authentic Tiffany jewelry.
Tiffany is accusing Costco of trademark infringement, counterfeiting, dilution, and false advertising.

DC Comics Sues Batmobile Maker for Trademark and Copyright Infringement

February 5, 2013,

batman-keys.jpgOrange County - DC Comics Inc. filed a lawsuit in Orange County against a custom carmaker claiming that the automaker is infringing its trademarks and copyrights by building and selling replicas of the Batmobile.

Mark Towle, who owns Gotham Garage in Orange County, asked U.S. District Judge Ronald S.W. Lew of the Central District of California to grant his motion for summary judgment claiming that DC Comics knew he had been building the Batmobile for at least ten years and said the company had waited too long to assert its rights.

The carmaker claimed that he was contacted in 2003 by counsel for Warner Bros. Entertainment Inc., the parent company of DC Comics, regarding a photograph the company had come across depicting the Batmobile in various stages of production at Towle's place of business in Santa Ana, the most populous city in Orange County.

Towle argued that although they knew his business made Batmobiles much earlier, DC Comics did not sue him for copyright and trademark infringement until May 2011. Because of this, Towle claims that DC Comics waited too long to file the lawsuit. He also argued that counsel for Warner Bros. never mentioned to him he was infringing on its copyrights or trademarks and never told him to stop his replica building activities.

According to Towle, the testimony of DC Comics' deputy counsel for intellectual property demonstrated that the company had not been enforcing its intellectual property rights with Batmobile reproducers in any way from 1995 to 2010, effectively waiving its right to sue for infringement by failing policing its trademarks and copyrights.

Towle also argued that DC Comic's trademark BATMOBILE only registered in November of last year for use on automobiles. Before that date, DC Comics was not in the automobile market and therefore it could not have suffered any damages from his Batmobile sales.

The comic book publisher argued that Judge Lew should grant its competing motion for summary judgment, arguing there is no evidence DC Comics knew about Towle's infringement in 2003 and claiming he should have to reimburse the company for the profits he earned by using the company's trademarks and copyrights without authorization.

Gotham Garage's business relies on building replicas of the most iconic cars from the movies, the Batmobile being crucial to the business. The cars sell for as much as $90,000 and customers wait more than a year for a custom car.

H&R Block Sues Intuit for Trademark Infringement and False Advertising

January 28, 2013,

money-cut.jpgOrange County - Three units of H&R Block Inc. filed a lawsuit against TurboTax maker Intuit Inc. claiming that the company launched an advertising campaign that infringes H&R Block's trademark and misleads consumers as to the legitimacy of H&R Block's services.

H&R Block Eastern Services Inc., HRB Innovations Inc. and H&R Clock Enterprises LLC oppose the newest marketing campaign Intuit launched in order to promote the do-it-yourself tax return software for the upcoming tax season. H&R Block accused Intuit of airing advertisements that make unauthorized use the H&R Block trademark and falsely represent H&R Block's competence to file tax returns.

H&R Block claims it has spent over half a century building its trademark, which is strong, distinctive and famous. The complaint alleges that Intuit is using its trademark in order to degrade the company and enhance its own profits.

The complaint alleges its trademark is being used in the advertisements to compare services and to suggest that H&R Block recruits and employs tax preparers with no experience, who are not adequately trained or credentialed and are simply seasonal employees while TurboTax offers "real tax experts" to handle customer questions.

H&R Block also alleges that Intuit's advertising campaign attacks the reputation of H&R Block by suggesting that more people use, and therefore trust, TurboTax than H&R Block's traditional in-store services.

The complaint goes on to say that Intuit's "claims are unsupported and its actions are not innocent." It alleges that the campaign was timed to launch at the beginning of the tax season in order to maximize Intuit's benefit and to inflict the maximum amount of harm on H&R Block.

The complaint seeks immediate injunctive relief, claiming that if Intuit is allowed to continue its advertising campaign it will do irreparable harm to H&R Block. "Every day that the Campaign continues to run, Plaintiffs suffer great harm in that Defendant's misinformation may lure an untold number of consumers to Defendant's product, dissuade consumers from seeking Plaintiffs' services, or both," the complaint said.

H&R Block claims monetary remedies are not sufficient, as each current customer of H&R Block that is duped by the advertising campaign is likely to be a customer lost for life, as tax preparers tend to use the same method every year. Though, the complaint does ask for Intuit's profits that were obtained by its deceptive ads and for other damages.

Kardashian Sisters Face $10 Million Counterclaim for Trademark Infringement

January 15, 2013,

cosmetics.jpgOrange County - The Kardashian sisters and the cosmetics company Boldface Licensing + Branding were hit with a $10 million trademark infringement counterclaim in California federal court by a Florida-based makeup artist on Wednesday.

Makeup artist Lee Tillett owns the KROMA trademark, a name she uses on her line of cosmetics. In her counterclaim, Tillett alleges Boldface's use of the brand name Khroma, which is endorsed by Kim, Kourtney and Khloe Kardashian, constitutes trademark infringement, false designation of origin, and unfair competition.

The dispute started when Tillett sent a cease and desist letter to Boldface in June 2012 when she learned of the company's intention to use the name. The parties communicated back and forth but were unable to reach an agreement.

Tillett's counterclaim came as a response to the November 2012 lawsuit Boldface filed requesting a declaratory judgment that Boldface be able to use Khroma as the brand for its cosmetics line, despite Tillett's trademark.

In a recent trademark registration for KROMA, Tillett claims she has been using the Kroma name since 2004. Because of the similarity between the two names, the United States Patent and Trademark Office rejected Boldface's applications for the KHROMA trademark on grounds that it would likely cause confusion between the two brands.

Boldface was founded by Nicole Ostoya in Nevada, with the intent of licensing entertainment and designer brands to launch cosmetic lines. "Khroma Beauty by Kourtney, Kim and Khloé" is the first line of cosmetics the company has launched and Tillett claims that Boldface would quickly run out of money without the Kardashian's line.

In the counterclaim, Tillett alleges that the high profile of the Kardashian sisters and the hype around the Khroma brand has caused a significant amount of confusion between the two cosmetic lines. She claims this has caused people to assume her Kroma products are associated with the Kardashian sisters and has diluted and damaged her brand.

Tillett also claims that she was in talks with a representative of Kim Kardashian about a product placement deal for her Kroma cosmetics on the reality television show "The SPINdustry," which Kim Kardashian produces. They were unable to make a deal and Tillett claims Kim came up with the Khroma name after their negotiations ended.
In her prayer for relief, Tillett requested that the court dismiss the case brought by Boldface, issue an injunction prohibiting Boldface from using the name Khroma, require corrective advertising, disgorgement of profits, relief for lost profits, legal costs and treble damages for trademark infringement.

The California-based cosmetics company Chroma Makeup Studio LLC is also suing Boldface for trademark infringement in a separate lawsuit in the same court.

Bob Marley's Family Settles Feud over Late Singer's Trademarks

December 6, 2012,

marley-bob.jpgOrange County - Bob Marley's relatives have settled a family feud that began when Marley's half brother exploited the late singer's legacy for financial gain.

Fifty-Six Hope Road Music Ltd., which represents Bob Marley's widow and nine of his children, filed a lawsuit against his half brother Richard Booker in December 2011. The lawsuit followed a cease and desist letter Fifty-Six Hope Road sent to Richard Booker in March 2009, which Booker failed to respond to or comply with.

In the complaint, Hope Road claimed that Booker had used Bob Marley's trademarks, along with his name and likeness, to promote business ventures thereby capitalizing on Marley's legacy even though he does not own right's to Marley's name, likeness, persona or identity.

Hope Road claimed in the complaint that the "defendants' use continues unabated and, in fact, has increased in scope." It also alleged false designation of origin, trademark infringement and dilution, and copyright infringement.

Hope Road claimed that Booker's trademarked 9 Mile Music Festival was named for the Nine Mile Village in Jamaica where Bob Marley was born and buried. It claimed that Booker had used Marley's name in conjunction with the festival, including using the headline "All For the Love of Bob Marley" in a press release promoting the event. Hope Road also claimed that Booker used copyrighted images of Bob Marley on his website to promote the event.

In addition to its claims about the festival, Hope Road claimed that Booker had used Marley's name and likeness to promote business ventures relating to food items, liquor, and tour packages.

Booker attempted to register the trademark "Mama Marley" to use in conjunction with a Jamaican food restaurant, which Hope Road filed an opposition to in August 2008.
Hope Road acknowledged that Booker did have a licensing agreement at one time to use Bob Marley's trademarks, but claimed that Booker reneged on the agreement.
Despite their differences, the parties were able to settle the case, though they are keeping details of the settlement confidential.

According to the joint stipulation filed Friday, the parties "hereby stipulate to and agree that between them they have reached a settlement resolving all claims at issue in this case and that all claims for relief alleged herein ... shall be dismissed with prejudice."

"Yummi Bears" Trademark Lawsuit Still Alive After Judge's Ruling

October 31, 2012,

gummy_bears.jpgOrange County - This week, a federal Judge in the Central District of California in Orange County ruled in favor of Hero Nutritionals to keep its trademark infringement claim alive against vitamin rival Nutraceutical Corporation.

In the lawsuit, Hero Nutritionals claims that Nutraceutical Corp. is engaging in unfair competition and trademark infringement by using the word "yummy" for its nutritional supplements marketed to children. Hero Nutritionals currently owns the trademark rights to "Yummi Bears" for vitamins.

In a hearing held Monday in Orange County, U.S. District Judge Andrew J. Guilford, reviewed Nutraceutical's motion for summary judgment and denied it stating that it was his belief that the claims asserted by Hero Nutritionals would be better decided by a jury. He further ruled that although it was far from certain that consumers would likely be confused by the names of the two products, there were "genuine issues of fact" related to Hero's allegations that should be settled at trial.

The trial is scheduled for December of this year and both sides had submitted opposing filings just a day prior to Judge Guilford's most recent ruling. In its recent filings, Hero alleges that Nutraceutical's nutritional supplements for children violate its trademark rights on "Yummi Bear" products. In contrast, Nutraceutical asserts that it is "highly unlikely" that consumers would be confused between the products its makes and those of Hero. Nutraceutical argues that the sales history of the products themselves demonstrates that confusion is highly unlikely as to the actual source of these products. Nutraceutical further added that it has been using the term "yummy" on chewable children's supplements for 14 years. In that time, there has not been a single instance of actual confusion and Hero has made no argument against the use until now.

Hero asserts that Nutraceutical is selling infringing products such as "Yummy Greens" and "Yummy Gummy" which it alleges are clear violations of its trademark rights. A representative for Hero stated that "[Nutraceutical's] use of the name 'Yummy Greens' to market bear-shaped gummy vitamins wrongfully infringes on Hero's Yummi trademarks [and] free-rides on the substantial efforts and expenditures Hero invested to establish its reputation and goodwill through public recognition of the 'Yummi' brand." Hero also believes that there is a strong likelihood that if its case is allowed to go to trial, a jury will find in its favor on its trademark infringement and unfair competition claims.

The lawsuit between Hero and Nutraceutical Corp was initially filed in August 2011. The court documents allege trademark infringement under the federal Lanham Act, as well as unfair competition under federal and state laws. A motion for summary judgment asserting arguments similar to those presented in Monday's memorandum was filed by Nutraceutical in September of this year. However, after reviewing the relevant documents, Judge Guilford denied that motion in a minute order released Tuesday.

Calif. Appeals Court Shoots Down Mystery House Trademark Lawsuit

October 25, 2012,

Winchester_mansion.jpgOrange County - A California state appeals court on Wednesday declined to revive the popular San Jose tourist attraction the Winchester Mystery House's attempts to keep a film company from using its trademarks in a movie loosely based on the builder of the house.

The 160 room Mystery House was under construction for 38 years starting in 1884, in a quixotic undertaking by Sarah Winchester, the widow of gun manufacturer William Winchester, which only ended with her death in 1922. According to legend, Winchester believed that if she halted construction on the house, she would be haunted by the ghosts of those slain by her husband's weapons.

After Global Asylum Inc. released the film "Haunting of Winchester House," Winchester Mystery House LLC sued the company alleging unauthorized use of its trademarks, among other claims. The trial court granted summary judgment to Global Asylum, and the Mystery House appealed, saying the court failed to look at whether its trademarks have become an integral part of the public's vocabulary.

The trial court properly granted the motion for summary judgment, the California Sixth Appellate District ruled, saying Global Asylum has a First Amendment right to the use of the name.

In 2008 the Mystery House entered an agreement with Imagination Design Works Inc. to use the mansion as a location for the filming and production of a movie, granting IDW exclusive rights to the use of the property and certain trademarks and copyrights relating to its history.

In 2009 the Mystery House received an email from a Global Asylum production coordinator asking about filming location rates for the property. The Mystery House replied that it had granted the exclusive rights to the Winchester story to another company.

The Mystery House learned later that year about Global Asylum's film, and sent it a series of letters informing it of the possible trademark infringement to no avail.

The DVD for "Haunting of Winchester House" features a depiction of a Victorian style structure, and the back cover describes a story in which a family moves into a 160 room mansion only to have a malevolent force abduct their daughter. The cover art, though, does not depict the actual mansion, nor does it feature the phrase Winchester Mystery House anywhere, the appeals court noted.