New York Jets Seek Summary Judgment Over “Ultimate Fan” Trademark

May 9, 2013, by Mandour & Associates, APC

Los Angeles – Action Ink Inc., owner of the THE ULTIMATE FAN U.S. Trademark Registration for sporting event promotion services which registered in 1985, is playing defense against the New York Jets football team and a game development company called Arkadium Inc.

The New York Jets recently filed for summary judgment in a lawsuit that Action Ink filed in January of 2012 in a Louisiana District Court.  The lawsuit came about after the New York Jets filed a trademark application to register ULTIMATE FAN for a downloadable computer game and related entertainment services.  Despite Action Ink’s pre-existing THE ULTIMATE FAN trademark registration, the Jet’s ULTIMATE FAN trademark registered in May of 2011.

The New York Jets use ULTIMATE FAN in relation to a video game created by Arkadium which allows users to enjoy virtual football game experiences and challenges while an actual NFL game is in progress.

The Action Ink complaint accuses the New York Jets of trademark infringement and complains that the sports market targeted by both companies is being swamped with advertising using “Ultimate Fan.”  The result is consumers are confused as to the source of Action Ink’s trademark, believing the New York Jets originated the slogan, instead of it, claims Action Ink.  This “reverse confusion” is saturating the sports market and is allegedly damaging Action Ink’s business.

Recently the New York Jets filed a Motion for Summary Judgment arguing that Action Ink has abandoned its trademark because it has not been in continuous use for 3 consecutive years.  Three years of non-use of a trademark is presumptive abandonment.  The Jets believe that Action Ink defrauded the U.S. Patent & Trademark Office upon renewal of the trademark.

Action Ink opposed the Motion for Summary Judgment pointing to several cease and desist letters it sent to third parties using “The Ultimate Fan” over the years, and also revealed attempts to cut a deal with Louisiana State University to expand its business.  Action Ink is alleging that, “the existence of residual goodwill is sufficient grounds to reject an abandonment claim.”  Action Ink claims that just because it had sporadic periods of erratic sales does not mean the goodwill from the trademark has disappeared.  Thus far, the judge has not ruled on the Summary Judgment Motion.

Action Ink is also involved in a similar lawsuit it filed against Anheuser-Busch Inc. who started using “Ultimate Fan” in some of its beer commercials.

Tagged as: Action Ink, Arkadium, New York Jets

Tory Burch Awarded $20 Million From Online Trademark Infringement Scheme

April 20, 2013, by Mandour & Associates, APC

Los Angeles – Tory Burch LLC, fashionable and popular maker of sportswear, shoes, handbags and small accessories, won a default judgment in an Illinois federal court case against several unknown persons who were selling bogus Tory Burch merchandise over the Internet.  The complaint, filed in February of this year, was directed to  “DOES 1 through 100” claiming the entities had infringed on Tory Burch’s trademarks by offering fake goods using the Tory Burch famous name and trademarked logo on several of its websites.

On April 8, U.S. District Judge Rebecca Pallmeyer ruled in favor of plaintiff Tory Burch, requiring the unnamed defendants to pay 20 million dollars in damages for the unauthorized use of trademarks and trying to pass the phony Tory Burch merchandise as authentic. The Judge also granted a permanent injunction against the infringers after they failed to acknowledge the allegations in the complaint.  The infringers were held liable for “trademark infringement, counterfeiting, false designation of origin, cyber piracy and breaking the Illinois Uniform Deceptive Trade Practices Act,” which is directed to those who try to benefit by advertising or selling goods or services using misleading tactics or false representations.

Numerous consumers have already been deceived into believing that the fake goods were real by the infringer’s use of the “Tory Burch” name in the body of hundreds of different URLs, and by using the logo on mock websites.  Tory Burch, started in 2003 and based in New York City, feels its reputation has been tainted due to the vast purchases of knockoffs already sold, although the domain names have since been transferred to Tory Burch.  Additionally, any money held in accounts by defendants was frozen and PayPal funds due to the infringers were also ordered for transfer within 10 days to Tory Burch, as payment toward the judgment.

It is believed the imitation items were manufactured in China as well as several other foreign countries.  However, the culprits went to great lengths to conceal their actual identities and the full extent of the entire operation.  So effective was the scheme, that the true identities may not ever be known.

Tony Burch had previously won in a similar lawsuit last year and was awarded $2 million against online retailers who also did not respond to the complaint.  Similarly, it was awarded $164 million in a 2011 ruling against other trademark infringers selling bogus goods on the Internet.

USPTO Reverses Position on Apple’s IPAD MINI Trademark Application

April 5, 2013, by Mandour & Associates, APC

Los Angeles – Late last year Apple, Inc. filed a trademark application for IPAD MINI for the new smaller and sleeker version of its famous iPad.  Apple has already owned a registered trademark for IPAD since 2010.

On January 24, 2013, the United States Patent & Trademark Office issued a first Office Action rejecting the IPAD MINI Application, claiming that the trademark was merely descriptive.  The Examining Attorney found the word “mini” descriptive as “something that is distinctively smaller than other members of its type or class.”  The Examiner also rejected the IPAD portion of the trademark as descriptive, stating “…‘IPAD’ is descriptive when applied to applicant’s goods because the prefix ‘I’ denotes ‘internet, and the term “PAD” is descriptive of the goods because it “refers to a ‘pad computer’ or ‘internet pad device’”.

The refusal was somewhat surprising in that the U.S. Patent and Trademark Office previously allowed registration of the IPAD trademark.  Beyond the descriptiveness refusal, the specimen of use submitted with the application, a web page from Applicant’s catalog, was also rejected.  The Examining Attorney stated that the specimen “fails to include a picture or a sufficient textual description of the goods in sufficiently close proximity to the necessary ordering information, a web link for ordering the goods, and thus, appears to be mere advertising material.”

However, in a near complete reversal, on April 3, 2013, the Examining Attorney “superseded” the original Office Action and issued a Supplemental Office Action.  In the new Office Action, the Examiner withdraws both the descriptiveness refusal and the refusal of the specimen of use.  Now, with her apologies, she only requires a disclaimer of the term MINI apart from the trademark as shown.

It is unknown whether the Examiner made a second review of her first Office Action, if a supervisor reviewed the Office Action she initially sent to Apple, or if Apple’s counsel spoke to the Examiner requesting clarification of the Office Action.  Regardless, Apple will undoubtedly agree to disclaim the word MINI.

Apart from the descriptiveness and specimen refusals, eight different prior pending applications were cited against the IPAD MINI application on the basis of a likelihood of confusion.  So, unfortunately for Apple, it does not appear that IPAD MINI will be registering any time soon.

Tagged as: Apple, iPad Mini

Aereo Loses Bid for TRO in AERO Trademark Infringement Lawsuit

March 20, 2013, by Mandour & Associates, APC

Los Angeles – Aereo, Inc. lost its bid for a temporary restraining order against Alki David and his Internet television service FilmOn.com, Inc. that would have prohibited David and the company from using the name Aero or the domain name Aero.tv until the trademark infringement lawsuit is over.

U.S. District Judge Audrey B. Collins of the Central District of California in Los Angeles denied Aereo’s ex parte application for the temporary restraining order in chambers without prejudice and without commenting on her decision.

In its bid for the temporary restraining order, Aereo claimed that FilmOn was intentionally using a similar domain name in order to profit off Aereo’s brand and claimed that it would be irreparably harmed if FilmOn were allowed to continue with its $100 million advertising campaign to promote the streaming services provided by Aero.tv.

New York-based Aereo said that FilmOn’s “actions infringe Aereo’s trademark rights and are intended to and likely to mislead the public into believing that ‘Aero’ is associated with Aereo.  The goodwill Aereo has developed will be permanently damaged by defendant’s uncontrolled use of its name, and the damage to plaintiff increases daily.”

Los Angeles-based FilmOn argued that a temporary restraining order was a drastic request.  FilmOn said that it has been using the AERO trademark in commerce in the United States since January 2011 and the trademark registered in early 2012, while Aereo only launched in February 2012.

FilmOn also argued that Aereo was unable to meet the burden of proof necessary for such an extreme request on an ex parte basis, claiming that Aereo’s assumption that it would be irreparably harmed by FilmOn’s use of the AERO trademark is misplaced and does not satisfy the legal requirements for obtaining a temporary restraining order.

Aereo filed the lawsuit in Los Angeles on March 6th as a response to FilmOn’s lawsuit seeking a declaratory judgment that FilmOn had rights to the AERO trademark.  Aereo’s complaint alleged that FilmOn deliberately chose a confusingly similar name for its online television service in order to benefit from the good will associated with the Aereo name.

The lawsuit is just another legal battle between David and Aereo backer Barry Driller.  A U.S. federal judge previously prohibited David from using BarryDriller.com and Aereokiller LLC to market rival online television services.

Tagged as: Aereo, Alki David, FilmOn.com

Redskins Defend Name in TTAB to Protect Trademark Rights

March 14, 2013, by Mandour & Associates, APC

Los Angeles – The Washington Redskins asked the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board to dismiss six petitions to cancel filed by a group of Native Americans, arguing that there is no evidence to support the group’s claim that a considerable percentage of Native Americans find the team’s name offensive.

At the hearing held last Thursday, the group of Native Americans argued that the NFL team’s name, former fight song, cheerleader outfits and halftime shows illustrate the team’s disparaging and offensive treatment of Native Americans.

The Washington Redskins’ countered that its name is associated with the team, football and the entertainment it provides at games and claimed that it has never used the name in order to perpetuate an ethnic slur or disparage Native Americans in any way.

The Redskins and the TTAB both pointed out that Native Americans would have had to have found the term Redskins offensive at the time the trademarks were registered in order for the Redskins trademark protection to be cancelled.  The six trademarks in question were registered between 1967 and 1990.

The Redskins argued that a group of five Native Americans claiming that the name is offensive is not evidence that the term is offensive to a significant amount of the Native American population.  Nor does the opinion of the five petitioners offer any evidence that Native Americans were offended by the name during the 23-year period when the trademarks were registered.

The Native Americans told the three-judge panel that the Redskins’ six trademarks they are petitioning fall under provisions of the Lanham Act that prohibit any trademark that is disparaging from being registered.

“We are focused on the word ‘Redskin’ and no other matter,” the Native American group argued.  “‘Redskin’ is an ethnic slur.  It is an epithet.”

Though the TTAB cannot prevent the team from using the name, the Native Americans hope that if the team loses trademark protection, it will be persuaded to rebrand the team.

The petitions, filed in 2006, are the second attempt to cancel the Redskins’ trademarks.  In 1992, a group of seven Native Americans petitioned to cancel the trademarks.  The TTAB granted the petition in 1999, but the U.S. District Court for the District of Columbia overturned it in October 2003 ruling that the petitioners did not have standing to complain because they did not take legal action until 25 years after the first trademark registered.

It could take up to a year for the TTAB to make a decision on the current petitions.

Tagged as: Washington Redskins

Yankees have Rights to Evil Empire without Trademark Registration

February 25, 2013, by Mandour & Associates, APC

Los Angeles – A U.S. Patent and Trademark Office panel recently ruled that the New York Yankees have rights to its nickname Evil Empire and can prevent others from registering the name as a trademark, even though the team has never attempted to register the trademark.

On February 8, the Trademark Trial and Appeal Board held that the company Evil Enterprises Inc. could not trademark BASEBALL’S EVIL EMPIRE, which it planned to use on clothing with the Yankees logo and a depiction of a devil holding a pitchfork.  The TTAB said that consumers are likely to be confused by the clothing and believe that the goods are associated with the Yankees.

The team has never attempted to trademark the phrase, nor has it used the name in connection with any goods or services, yet the TTAB said the name has become linked with the Yankees in the minds of the average American to the point that the team has inherent rights to the name.

The panel cited a number of news articles about the 27-time World Series champions that referred to the team as the Evil Empire and concluded “there is only one Evil Empire in baseball and it is the New York Yankees.”

Evil Enterprises originally filed a trademark application for BASEBALL’S EVIL EMPIRE in 2008, which the Yankees filed a notice of opposition to in 2009.

Evil Enterprises argued that it should be able to trademark the name as it refers to any sports team that is willing to spend huge sums of money to get the best athletes.  The board rejected this argument, saying that articles that refer to other sports teams as Evil Empires merely indicate the teams want to be in the Yankees position and be able to afford a roster of players that can win more championships.

The board also rejected Evil Enterprises argument that the trademark is a “spoof and parody” of the team and therefore will not cause confusion.

Despite the ruling, Evil Enterprises said it will continue to produce its Evil Empire apparel, saying that just because it cannot register the trademark does not mean it cannot use the term as a brand identifier.  The team has never shown any indication that it plans sue for trademark infringement over the use of the name on apparel.

Evil Empire was initially coined by Larry Lucchino, president of the Boston Red Sox, after Jose Contreras signed with the Yankees instead of his team.  Red Sox fans quickly adopted the nickname as a way of disparaging the Yankees.  The Yankees, however, saw the name as a reflection of the team’s success and embraced the name in several ways, including playing Darth Vader’s theme song from “Star Wars” at home games.

Tagged as: Evil Empire, New York Yankees

Viacom Asks Judge to Dismiss Gibson’s Trademark Infringement Lawsuit

February 12, 2013, by Mandour & Associates, APC

Los Angeles – Viacom International Inc., owner of the Nickelodeon television network, told a Los Angeles federal judge that Gibson Guitar Corp.’s lawsuit accusing Viacom of infringing Gibson’s trademarks should be dismissed because the alleged infringing goods were never sold in the United States.

The guitar manufacturer filed the lawsuit against Viacom in the California Central District in Los Angeles when it learned of sales of V-shaped ukuleles featuring the popular Nickelodeon cartoon character SpongeBob SquarePants.  Gibson claims that the ukuleles infringe its trademarked “Flying V” electric guitar and peg head design in violation of the Lanham Act.

In the complaint, Gibson said Viacom and codefendant John Hornby Skewes & Co. Ltd. (JHS), an instrument distributor in the United Kingdom, have used the trademarks of Gibson in order to mislead consumers into believing Gibson makes the ukuleles.

New York-based Viacom asked U.S. District Judge Dean D. Pregerson to dismiss the lawsuit because U.S. courts lack subject matter jurisdiction over the case.

Viacom claimed that the ukulele was manufactured by JHS in China and was only marketed and sold in Asia, Europe and Latin America.  Because the ukulele was never sold in the United States, Viacom argued that the Lanham Act does not apply therefore United States courts lack subject matter jurisdiction.

The media conglomerate also claimed that Gibson does not have any evidence to back up its assertion that the ukuleles are being sold in the United States and Viacom argued that statements based solely on information and belief should not be sufficient to keep the lawsuit alive.

Viacom admitted it had licensed the use of the SpongeBob trademarks to JHS for use on various products.  However, it claims the terms of the agreement expressly prohibit any of the products from being sold in the United States.

Viacom also claimed that it had nothing to do with the design of the ukuleles and have only been lumped into the lawsuit with JHS because said it licensed the SpongeBob trademarks to JHS, rather than because it had done anything wrong.

Gibson filed the lawsuit against Viacom in Los Angeles in December with a variety of claims including trademark infringement, trade dress infringement, counterfeiting, unfair competition and false designation of origin.

Tagged as: Gibson Guitar, Nickelodeon, Viacom International

Polo Ralph Lauren Argues U.S. Polo Association Infringes Its Trademark

January 22, 2013, by Mandour & Associates, APC

Los Angeles -L’Oreal USA Inc., licensee of Polo Ralph Lauren Holdings Inc.’s trademark for use on fragrances, told the Second Circuit Friday that the U.S. Polo Association’s link to the sport of polo does not give it license to infringe Ralph Lauren’s famous trademarks.

During the oral arguments in Manhattan, counsel for L’Oreal said that the U.S. Polo Association should not be allowed to use its connection with the sport of polo as an excuse for infringing the famous horse-and-rider logo.

The U.S. Polo Association instigated the dispute when it filed a declaratory judgment lawsuit against Ralph Lauren in November 2009, asking the court to rule that it can use its logo on men’s fragrances.  Judge Robert W. Sweet ruled against the declaratory judgment in May 2011.

The fragrance-branding dispute is just another battle in a long history of legal clashes between the two entities.  U.S. Polo Association and Ralph Lauren have been litigating trademark infringement issues since 1984.

In 2003 the two companies were able to come to a partial settlement in which the U.S. Polo Association obtained the right to sell clothes with its logo which features two men on horses superimposed on each other.  However, a lower court found the U.S. Polo Association branching into fragrances, a business Ralph Laruen has been in since the 1970s, infringed on Ralph Lauren’s trademarks and it entered an injunction prohibiting the association from selling fragrances with its logo.

L’Oreal argued that the U.S. Polo Association has been trying to encroach upon the Ralph Lauren trademarks for years and asked the Second Circuit to uphold the lower court’s ruling.

L’Oreal accused the U.S. Polo Association of attempting to “ride the coattails of one of the most famous companies on earth” and argued that it should not be allowed to profit from the time and effort Ralph Lauren has put into growing its brand to what it is today.

The U.S. Polo Association argued that issuing an injunction prohibiting it from entering the fragrance business is overbroad.  It argued that perfumes and clothes are related categories that are often marketed together in ad campaigns and placed near each other in stores.  If the association is allowed to sell clothes, it argued it should also be allowed to sell fragrances.

Tagged as: L’Oreal, Polo Ralph Lauren, U.S. Polo Association

Apple Likely to Purchase IPHONE Trademark in Brazil

January 7, 2013, by Mandour & Associates, APC

Los Angeles – Apple is expected to make an offer on the IPHONE trademark in Brazil which is currently owned by IGB Eletrônica SA.  IGB Eletrônica SA released an Android-powered smartphone called the IPHONE Neo One under the company’s Gradiente brand this month.

Gradiente said that it will take all measures available to it to protect its intellectual property rights, as it does not believe the two brands can coexist in the same market.

Gradiente applied for the trademark in 2000, two years after Apple launched the iMac, but six years before Apple announced the launch of the iPhone at Macworld San Francisco.

Gradiente was granted the right to use the trademark on its smartphones in Brazil in 2008.  Brazil’s trademark office said that Gradiente requested the right to the trademark before Apple and therefore it has exclusive rights to the brand until 2018.

Despite being granted the right to use the trademark in 2008, Gradiente did not start using the trademark on smartphones until last week.  The company claims its focus had been on a corporate restructuring process, which it wrapped up earlier this year.

Gradiente said it registered the trademark because it expected “there would be a technological revolution in the world of smartphones with the convergence of voice and data transmission and reception via mobile Internet.”

The company, however, has not kept up with the technological revolution.  The phone’s appearance is similar to Apple’s iPhone, but it runs on the outdated 2.3 version of Android’s operating system.  The phone features a 3.7-inch touch screen, Bluetooth, Wi-Fi, 3G and a camera.

Gradiente said it currently does not plan to sell or license the rights to the brand, but it is likely that Gradiente and Apple will come to some agreement that will allow Apple to use the trademark, as Apple will not want to stop selling the iPhone in Brazil.

This is not the first time Apple has had international competition for its trademarks.  Due to a loophole in its contract, Apple was unable to procure rights to the iPad brand in China from Proview Technology before it launched the iPad.  Apple ended up paying Proview $60 million for the trademark.

The trademark in Brazil is not expected to bring that much money in, as the market is significantly smaller in Brazil than it is in China.  However, the company will likely still pay a substantial amount of money for the trademark, thanks to the popularity of the iPhone name.

Tagged as: Apple, Gradiente, IGB Electronica

“Angry Birds” Toy Counterfeiter Slapped with Copyright and Trademark Injunction

November 30, 2012, by Mandour & Associates, APC

Los Angeles - A California Federal judge ordered a counterfeiter to stop selling toys that infringe on Rovio Entertainment Ltd.’s copyrights and trademarks related to its popular video game, “Angry Birds.”

Finland-based Rovio filed the complaint on October 29th against Royal Plush Toys Inc., a Livermore, California-based company, the company’s President, Jong K. Park, and two other companies affiliated with Park.

The complaint states that Royal Plush’s stuffed toys are “nearly identical with only minor variations that most consumers would not recognize,” to the plush toys made by Commonwealth Toy & Novelty Co. Inc., the toy company that produces “Angry Bird” plush toys under a licensing agreement with Rovio.

In addition to the infringement allegation, the complaint claimed that Park and his affiliated companies were engaging in unfair competition and were being unjustly enriched by using the “Angry Birds” brand which Rovio has devoted time and money into building.   According to Rovio, the “Angry Birds” game, which started out as an application for iPhones, is now available on a wide variety of platforms and devices.  It has been downloaded more than a billion times.

Rovio asked  ex parte early in the case for a temporary restraining order.  U.S. District Judge Saundra Brown Armstrong denied the motion, stating that Rovio had not presented substantial evidence to prove that Royal Plush would likely destroy evidence before the injunction hearing could take place.  Armstrong did, however, set an expedited schedule for the preliminary injunction and granted Rovio’s request for expedited discovery, giving Royal Plush only 14 days to produce certain records relating to its sales of the infringing goods.  Even though Rovio won based on Royal Plush’s failure to file an opposition, Armstrong stated that Rovio would have likely won the case either way based on the merits of their case.

“There are no substantial material differences between the overall design of [Rovio's] plush toys and [Royal Plush's] alleged knockoff plush toys,” Armstrong said. “Given the similarity in the products, the court finds that it is likely that consumers would find the works substantially similar.”

Tagged as: Angry Birds, Rovio, Royal Plush Toys

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