March 25, 2014, by Mandour & Associates, APC

Los Angeles – According to documents filed with the United States Patent and Trademark Office (USPTO), Proctor & Gamble has applied for trademark protection for the Old Spice whistle.  The application was filed on January 17, 2014 and describes the trademark as “a whistled tune comprising of the following notes: A3 sixteenth note, A3 sixteenth note, B3 eighth note, D4 eighth note, C#4 dotted eighth note, E4 sixteenth note, F#4 eighth note, D4 eighth note.” The USPTO has cleared the application for publication, making the famous jingle one of the relatively select few sound marks allowed federal trademark protection.

In comparison to the millions of word and design trademarks on file with the USPTO, sound marks comprise a very small portion of the total trademarks protected in the United States.  In 1971, the iconic “NBC chimes”, comprised of three notes became the first sound mark to be accepted and registered by the USPTO.   Other famous sound marks include Southwest Airline’s “You are now free to move about the county”, MGM’s roaring lion and the Sportscenter jingle.

Part of the reason so few sound marks exist has to do with the difficulty of the test for whether a sound qualifies as a protectable sound mark.  In the landmark Trademark Trial and Appeal Board (TTAB) case of In re General Electric Broadcasting Co., Inc., 199 USPQ 560 (TTAB 1978), the Board found that the test “depends on the aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it struck.”

For Proctor & Gamble, which seeks to register the trademark as part of its Old Spice brand in connection with “Antiperspirants and deodorants for personal use; Bar soap; Body sprays; Body wash; Cologne; Hair conditioners; Hair shampoo; Shaving preparations,” the whistle will be the company’s first federally protected sound mark, assuming it clears the month-long publication period, which will begin on April 22.  One of America’s most longstanding companies, Proctor & Gamble has been around since 1837 when it was founded by a British soapmaker and British candlemaker in Ohio.  Proctor & Gamble acquired the Old Spice brand in 1990 from Shulton, Inc., which  began making products under the Old Spice name in the 1930s.

February 7, 2014, by Mandour & Associates, APC

Los Angeles – In a likely effort to shift attention away from the fact that it has thrown in the towel on a major trademark dispute, Microsoft is rolling out a new campaign surrounding the rebranding of its SkyDrive cloud storage system.  The service will now be called OneDrive and comes at the end of a drawn out struggle over the SkyDrive name.

The issue began back in 2007, when the giant U.S. based tech corporation unveiled SkyDrive, a cloud-based file storage system.  Problems arose, however, when BSkyB, once of the UK’s biggest streaming media companies, filed a lawsuit against Microsoft for infringing on its own SkyDrive device, which it claimed it had been using for years.  After the case was brought up through the European Union, a judge ruled that Microsoft was infringing and that it must cease use of the name.  Though Microsoft initially adamantly touted its plans to appeal, the recent unveiling of the SkyDrive name change tells a different story.

This is not the first time that Microsoft has taken on a branding overhaul.  It famously changed Hotmail to Windows Mail Live to as well.  Even though  the swapping out of “Sky” for “One” may seem like a minor alteration, the change could have lasting effects on Microsoft as a whole, as the cloud storage system currently has over 250 million users.  In an effort to make sure that customers are not turned away from the product due to the name change, Ryan Gavin, the company’s General Manager of Consumer Apps & Services, has issued a letter on Microsoft’s blog.  The note assures that “service will continue to operate as you expect” and that all content will be available on OneDrive with no problems.

Microsoft is cleverly pitching the new name on its website.  One portion states, ” Why OneDrive?  We know that increasingly you will have many devices in your life, but you really want only one place for your most important stuff.  One place for all of your photos and videos. One place for all of your documents.  One place that is seamlessly connected across all the devices you use.  You want OneDrive for everything in your life.”

January 8, 2014, by Mandour & Associates, APC

Los Angeles – The family that rose to fame for maintaining their rough country, traditional lifestyle despite becoming millionaires are now fending off a lawsuit over a recently launched line of wines.  The Robertsons, who star in the hugely popular reality TV show Duck Dynasty, have added appropriately titled “Duck Commander” wines to their wide array of merchandise, which includes apparel, books, toys and even guns.  The wines come in three varietals – a chardonnay, a red blend and a moscato – and are currently sold across the country at Walmart.

Napa Valley-based Duckhorn Wine Company is not pleased about the Robertson’s expansion into the wine market and has sued for trademark infringement, claiming that the Duck Commander wines are too similar to its own Duckhorn-labeled wines.  According to the Duckhorn, “The case for confusion or dilution is compelling and concerning, given that many key U.S. retailers shelve wines alphabetically, meaning that Decoy by Duckhorn, Duck Commander and Duckhorn Vineyards wines could be placed side by side.”

While the Duck Commander wines each sell for under ten dollars at Walmart Stores, Duckhorn wines are priced at around fifty dollars or more and are sold mainly at grocery stores and specialty wine retailers.  Nevertheless, Duckhorn named Walmart in its complaint “to prevent further confusion, dilution and reputational and other harm to Duckhorn.”  According to a statement from the high-end winery, it had reached out several times before commencing the lawsuit in an effort to resolve what it believed to be trademark infringement.   Trinchero Family Estates, which makes Duck Commander wines, responded by claiming that the changes that Duckhorn requested be made to the Duck Commander line were “overreaching and unsupported.”

While records at the United States Patent and Trademark Office (USPTO) show that Duckhorn filed for trademark protection of “Duckhorn Vineyards” in 1984, “Duck Commander” was not filed in relation to wines until July 2013.  That application, which was filed by the Roberston Family company, Duck Commander, Inc., is still awaiting registration pending the outcome of the Duckhorn lawsuit.

November 22, 2013, by Mandour & Associates, APC

Los Angeles – A federal appellate court ruling handed down last week shut down Starbuck’s efforts to try to stop Wolfe’s Borough Coffee Inc.,  a small New Hampshire coffee seller,  from producing “Charbucks” drinks.  Filed in New York District Court, Starbucks’ original complaint detailed how Wolfe’s coffee brand and its subsidiary,  Black Bear Micro Roastery, had infringed upon its famous trademark and diluted its brand.  Writing for the three judge panel, Circuit Judge Raymond Lohier held that Starbucks did not meet its burden in proving that there was a “blurring” of its brand in the minds of consumers.

The lawsuit was originally filed in 2001 before finally landing in the 2nd U.S. Circuit Court of Appeals after twelve years.   As a focal part of its argument, Starbucks presented the results of a

phone survey of 600 consumers conducted by Warren Mitofsky, which concluded that “the number one association of the name ‘Charbucks’ in the minds of consumers is with the brand ‘Starbucks.’”

The panel of judges dug deeper, however, and found that the survey was “fundamentally flawed.” They then pointed out that though it was true that nearly 40 percent of those surveyed reported that  “Charbucks” made them think of “Starbucks” or “coffee,” when they were asked who they believed might  sell a “Charbucks” product, less than 5 percent said “Starbucks” or “coffee house” .  Thus, the judges ruled that there was little to no confusion as to the source of Charbucks and that few consumers believed that Starbucks was the product’s seller.

The defeat likely comes as big surprise for the Seattle-based coffee giant, which has grown since the early 70s from one small shop to over 18,000 retail locations across the globe.   Black Bear Micro Roastery, which is owned by Wolfe’s Borough Coffee Inc. and sells the Charbucks coffee at issue, was started in 1991 in New Hampshire.  While its website only includes information for one retail location, the company ships its products nationwide, which consist of 20 coffee varieties, including, of course, its Charbucks Blend.   Starbucks, for its part, recently responded to the finality of the years long legal saga by simply stating, “We are respecting the court’s decision.”

October 28, 2013, by Mandour & Associates, APC

Los Angeles –  The United States Patent and Trademark Office (USPTO) recently rejected a Trademark Application for the band name “The Slants.”   The Application was filed in 2011 in Class 041 for “Entertainment in the nature of live performances by a musical band” by a Portland area band.  After receiving two initial refusals, the named Applicant, Simon Tam, filed a Request for Reconsideration after Final Office Action.  That Request for Reconsideration was denied earlier this year, with the Examining Attorney providing a brief to back up his reasons for finding the Trademark unregistrable.

In denying the request, the Examiner cited Section 2a of the Lanham Act, which states that registration can be refused for any Trademark that “consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols.”  He went on to reference various impressions of the term “The Slants” and pointed out its use as “Offensive slang used as a disparaging term for a person of East Asian birth or descent.”  Concluding that the Trademark is disparaging to people of Asian heritage, he once again confirmed his refusal to register the mark.   As a last effort, Mr. Tam has filed an Appeal with the Trademark Trial and Appeals Board (TTAB) and is currently awaiting the results of that pending matter.

For his part, Mr. Tam has said that he finds the term “The Slants”  to be “neutral.”  As an Asian American himself with all of his bandmates also being of Asian descent, he stated that he would only be offended by the term “The Slants” if someone shouted it at him in a demeaning way.   He asserts that there are many words that could be used this way and points out that in his support behind the refusal, the Examining Attorney referenced no examples of actual Asian Americans who were offended by the term.  Rather, he notes that the term has not been used as a racial slur since the 1940′s and cites the oddity that the USPTO would label the term as offensive when members of the Asian American community themselves are seeking to trademark its use.

July 19, 2013, by Mandour & Associates, APC

Los Angeles – Designer fashion label Michael Kors LLC filed a lawsuit against Costco Wholesale Corp. for false advertising after the wholesaler included pictures of Michael Kors handbags in advertisements emailed to customers in April.

Costco is not an authorized Michael Kors retailer, and upon investigation, Michael Kors representatives could not find any of its bags for sale at the 19 retail locations it visited.

In its complaint, the fashion label alleges that the Costco deliberately misled customers by including prominently featured photos of Michael Kors handbags in an online advertisement, despite having no intention to sell the luxury designer bags.  Michael Kors brought its lawsuit against Washington-based Costco in U.S. District Court in the Southern District of New York on July 9.

The Costco ad suggested that Michael Kors bags were available for sale for prices starting at $99, when bags sold at authorized retailers cost at least double that price.  Michael Kors purses sell for $198 at the lowest on its online store and can cost upwards of $1,395.

While the ad did not explicitly state that the purses in the photos were Michael Kors designs, the photos did feature multiple Michael Kors designs that would clearly identify the bags as products of the luxury designer.

Michael Kors is seeking a court order barring any future marketing of Michael Kors products as well as payment of monetary damages.

This is not the first time that Costco has been accused of such “bait and switch” tactics.  In February, Tiffany & Co. filed a complaint against Costco for sale of “Tiffany” brand diamond engagement rings.

Tiffany & Co. has manufactured and sold high-end jewelry for 175 years and alleges it has maintained a reputation for quality products.  The rings sold at Costco were not affiliated with the company, and use of the “Tiffany” trademark was not authorized.

Tiffany claims that Costco’s use of the “Tiffany” brand has tarnished its image and done irreparable harm to the brand.  Costco defends that the use of “Tiffany” is the generic name for a ring setting popularized by the store, but Tiffany & Co. disagrees.

The lawsuit against Costco by Tiffany & Co. was also brought in U.S. District Court in New York’s Southern District.

July 2, 2013, by Mandour & Associates, APC

Los Angeles – Superstar Washington Redskins quarterback Robert Lee Griffin III’s bid to trademark his nickname RG3 hit a roadblock when Research Group Three, Inc. filed an opposition to his trademark application, claiming it has been using the trademark RG3 since 1998.

Griffin formed Thr3escompany, LLC in 2012 to develop a label and start producing merchandise bearing his nickname RG3.  The Delaware-based company filed its trademark application for RG3 in January 2012 on an intent to use basis for use in relation to apparel.  Research Group Three filed its Opposition to this trademark on June 24, 2013, initiating proceedings in the Trademark Trial and Appeal Board.

Research Group Three, an Irvine-based corporation, primarily sells motorcycle suspension products but has also developed a line of apparel under the RG3 brand.  The company claims that it has been known by the acronym RG3 since its inception in 1998.  In its Notice of Opposition, the company argued that Griffin’s use of RG3 would confuse consumers into believing that his apparel was associated with the motorcycle company’s own gear.  It argued further that allowing Griffin’s trademark application for RG3 to register would significantly damage the reputation of Research Group Three.

Though the motorcycle products company claims that it has continuously used the mark RG3 on apparel since July 1999, it did not file a trademark application for use on apparel until January 2013.  As a result, that application has been stalled on the basis of Griffin’s previously filed RG3 application.  The examining attorney for the application wrote that Robert Griffin III and his nickname RG3 are so famous that a consumer would believe any use of RG3 is connected to the football star.

Research Group Three disagrees with this assessment, claiming it began using RG3 in 1999, well before Griffin began use of his nickname.  The company argues that it has prior use of RG3 and should therefore be granted the exclusive right to its use.

Thr3escompany has filed a number of other intent to use trademark applications in relation to its apparel brand, which are still pending.  These applications include GO CATCH YOUR DREAMS, WORK HARD STAY HUMBLE, and NO PRESSURE NO DIAMONDS.

June 5, 2013, by Mandour & Associates, APC

Los Angeles – What began as a 20th anniversary tour for rock band Stone Temple Pilots ended in California court after the band fired its lead singer, Scott Weiland, and sued him for trademark infringement, among other claims.

The lawsuit, brought in California Superior Court for Los Angeles County, alleges that Weiland breached his contract with STP, his fiduciary duty, and misused trademarks held by the Stone Temple Pilots band partnership.

According to the band, Weiland would consistently show up one to two hours late for live performances during their 2012 tour and refused to commit to a new tour schedule.  The last straw, says band members, came in February when they realized that Weiland was planning his own solo tour with the same concept as their tour commemorating the 20th anniversary of their debut album, “Core”.

The Stone Temple Pilots band mates pointed to a clause in their partnership agreement to fire Weiland, expelling him from the band.  Since his firing, Weiland has begun touring as Scott Weiland and the Wildabouts, titling the tour “Purple at the Core,” which references the two best-selling Stone Temple Pilots albums.  He has also referred to himself as a former member of Stone Temple Pilots, which the band claims he is not entitled to do under the terms of their partnership agreement.

In response to the lawsuit, Weiland filed a countersuit of his own, seeking $5 million in compensatory damages.  Weiland has argued the partnership agreement requires the remaining members of STP to perform under another name should he leave the band.  He is seeking $2 million in damages for each time the band uses the Stone Temple Pilots name in concert or on advertisements.  Weiland argues that he is, in fact, the rightful owner of the STP trademarks and that his former band mates are the infringers.

STP has since hired Linkin Park frontman Chester Bennington to sing lead vocals for live performances and to collaborate on new recordings.  The band argues that Weiland’s claims of trademark infringement against them have interfered with a national promotional campaign for its new single, “Out of Time.”  STP intends to record its seventh album with Bennington at the helm, its first without Weiland.

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.

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.

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