October 2011

October 25, 2011, by Mandour & Associates, APC

Los Angeles – Long Island couple Robert and Diane Maresca have filed a trademark application with the United States Patent and Trademark Office (USPTO) for the name “Occupy Wall Street.” The “Occupy” organization is responsible for the protests that have taken up Wall Street in New York City and other cities across the United States.

Occupy Wall Street is a revolutionary-type movement that began on September 17, 2011 in Liberty Square in Lower Manhattan’s Financial District and has spread to hundreds of cities both nationwide and globally. The movement has adopted a “power to the people” philosophy, fighting against the power of major banks and multinational corporations and Wall Street’s role of creating an economic collapse that has caused a global recession.

In their application with the USPTO, the Marescas are seeking to trademark the phrase so they can stamp it on a variety of products including t-shirts, bumper stickers, beach bags, footwear, umbrellas, and hobo bags. When the couple was asked whether they were being hypocritical by attempting to cash in on a movement that protests corporations and capitalism, they responded that they have a “practical business side” and added, “If I didn’t buy it and use it someone else will.”

The Marescas reportedly spent $975.00 on the October 18th trademark filing. According to the couple, when they initially did a trademark check on the USPTO database, they discovered that a Brooklyn resident had filed for the trademark for the phrase “We are the 99%.” The Marescas proceeded with their filing for “Occupy Wall Street,” believing it would be a more powerful brand.

Robert Maresca stated that he has visited the Occupy Wall Street protest site several times and is in agreement with the movement that major corporations have too much power and influence over our elected officials. The couple has yet to mass produce any goods with the “Occupy Wall Street” phrase but they have already inked some t-shirt designs and have sewed some clothing and bags in their Long Island home.

The Marescas describe themselves as being “relatively conservative” and are pro-union and politically independent. Robert Maresca, a former union iron-worker, said that his family has been greatly affected by the recession which followed him becoming disabled by a stroke and seizure.

October 19, 2011, by Mandour & Associates, APC

Los Angeles – U.S.-based dating website, Plentyofish.com was rejected by the High Court in England over its claims that it was entitled to assert rights over UK-registered trademarks because it had a high number of UK visitors to its website.

The claims were rejected after Justice Birss QC determined that Plentyofish Media did not actually have any paying customers in the UK and that it does not own any “goodwill” trademark rights over UK-based rival Plenty More LLP. The judge dismissed the U.S. site’s argument that Plenty More was attempting to “pass off” its dating website, Plentymorefish.com, as its being associated with the U.S. site. Plentyofish’s claims that the Intellectual Property Office (IPO) in South Wales had failed to apply UK trademark law correctly.

“A reputation in the UK is not sufficient: customers in the UK are required and that is so whether the business provides products or services,” the judge said in his decision. He added, “Deciding who constitutes a UK customer from the point of view of a services business may involve tricky questions in some cases but as a matter of law in my judgment customers of some kind are required. Thus [the IPO] applied the right test when [it] sought customers (or a business) within this jurisdiction.

According to UK intellectual property laws, if a business can prove that its use of a trademark has established “goodwill”, or essentially a good reputation, in the business associated with that trademark, then goodwill rights are protectable. Much like trademark laws in the U.S., the UK laws will also protect you if another like business “passes off” their products or services as being yours and is making claim that its services are yours or that you are someway connected or endorsing the services. As long as you can demonstrate that you have suffered damages as a result of the infringement, then you can seek damages and injunctions preventing the unauthorized use.

Furthermore, trademark rights are also protected in the UK by registering the trademark at the UK Trade Marks Registry. According to the UK Trade Marks Act of 1994, a trademark may be rejected if it is used in a way that might mislead the public “particularly as to the nature, quality or geographical origin of those goods or services.”

The U.S.-based Plentyofish.com is a free service but asked its visitors to register as members. It argued that Plentymorefish.com, a paid, subscription-based service, was misleading and caused some visitors to register with the subscription service in the belief that they were signing up for Plentofish.com’s free service instead.

Plentyofish argued that the visitor numbers alone indicated that it was entitled to “goodwill” rights to the trademark. It also claimed that visitors to the sight could be considered “customers” since they had been “exposed” to the site’s advertising, a claim sharply rejected by the judge.

October 18, 2011, by Mandour & Associates, APC

Los Angeles – Fashion retailer Urban Outfitter’s line of Navajo Indian branded clothing and accessories has enraged people from the Navajo Nation government, who is alleging trademark infringement. The Navajo Nation is particularly upset with the retailer’s underwear products and a liquor flask that many tribe members consider disrespectful to their native American culture.

For years, runway models have been showcasing Navajo-inspired prints from top clothing designers. The Navajo Nation is taking issue with the clothing chain over its unauthorized use of the Navajo name on its products and marketing campaign. To date, the tribe has registered at least ten trademarks for “Navajo” that cover clothing, footwear, household products, textiles, and online retail sales.

As a result of the alleged infringement, the tribe’s Department of Justice fired off a cease and desist letter to Urban Outfitters in June, demanding that the clothier discontinue use of the Navajo name on its products. Although Navajo Nation has not received a response from the clothing chain, it remains “cautiously optimistic” that it will be able to convince Urban Outfitters to adopt another brand name and trademark.

“When products that have absolutely no connection to the Navajo Nation, its entities, its people, and their products are marketed and retailed under the guise that they are Navajo in origin, the Navajo Nation does not regard this as benign or trivial,” stated tribe attorney, Brian Lewis. He went on to say, “It takes appropriate action to maintain distinctiveness and clarity of valid name association in the market and society.”

Urban Outfitters, which has retail locations across the United States and overseas, claims that it has never been contacted by the Navajo Nation regarding the trademark. The retailer also defended its use of the name and said that it has no plans of altering or removing the Navajo name from its products or marketing. In a statement from company spokesman Ed Looram, he said:

“Like many other fashion brands, we interpret trends and will continue to do so for many years to come. The Native American-inspired trend and specifically the term ‘Navajo’ have been cycling through fashion, fine art and design for the last few years.”

Although the Navajo Nation has not initiated any legal action, one could argue that it has a strong case of trademark infringement. Essentially, the tribe could make the argument that consumers would be confused and believe Urban Outfitters has some association with the native Americans. The Navajos are a proud people, protective of their culture and reputation, and would like companies to be tasteful and respectful when using the Navajo print.

The issue with Urban Outfitters does not mean that the Navajo Nation is not open to working with companies. In 2007, Fermin Navar and his business partner Phil Brader, signed a 75-year licensing agreement with the tribe that allows them to sell skin care products and clothing with the Navajo name in exchange for profit share.

October 18, 2011, by Mandour & Associates, APC

Los Angeles – California-based Intel Corporation has filed a trademark infringement lawsuit against Intelspec, LLC, an engineering and project management company based in Salt Lake City. In the complaint, Intel claims that Intelspec uses a “name and mark that wholly incorporates and emphasizes the world-famous Intel trademark.”

Intel indicated in its claim that the names are so similar that it is causing confusion among consumers that there is an association between the two companies. Intel is also claiming that the Intelspec name is diluting the Intel trademark. The world’s largest semiconductor microchip maker, founded in 1968, is asking for a judge, at its discretion, to cancel or transfer all rights from the intelspec.com domain name to Intel. Intel is also seeking a judgment that will force Intelspec to “cancel or modify” its company name as well as damages and profits that Intelspec has made because it was using “Intel” in its name.

Since Intelspec is an engineering firm in the business of obtaining construction contracts from large government and private entities, Intel’s lawsuit seems odd, since the two company’s lines of business are not even remotely similar. Intel will likely have difficulty convincing a judge that consumers are likely to be confused between the two and how Intelspec could have capitalized in its field by using “Intel” in its name.

Despite the challenges it may face in proving any trademark infringement and trademark dilution, Intel has traditionally been very aggressive in protecting its intellectual property. The Intelspec lawsuit follows a series of trademark complaints filed by Intel, one in particular with the WIPO Arbitration and Mediation center that asked for the cancellation or transfer of fifteen different domain names that included the “Pentium” trademark.

There was no comment available from either company on the issue.

October 17, 2011, by Mandour & Associates, APC

Los Angeles – A Connecticut mother and businesswoman has succeeded in a trademark battle with the nation’s largest consumer products company and will retain the right to name her company after her daughter, Willa.

Christy Prunier had spent the last three years developing a line of skin care products targeted to adolescent females like her daughter, who gave her the inspiration to create the products. However, when the Willa product line which includes lip balms, cleansers, facial masks, and lotions was ready to hit the market, Prunier was met with objections from a rather well-known company. Proctor and Gamble was none too pleased that Prunier’s Willa brand was a bit too similar in name to its hair care line called Wella, and hit Prunier with a cease and desist letter.

The P&G cease and desist letter demanded that Prunier drop the Willa name and gave her two weeks to confirm that she was taking the necessary steps to comply with its demands or it would have to resort to “lengthy and expensive alternative measures.” After seeking the advice from a lawyer/family friend, Prunier decided not to back down to what she saw as trademark bullying and fought back by filing her own trademark infringement lawsuit, asking the court to rule that “Willa” does not infringe on the trademark for “Wella.”

As the world of intellectual property law has become more and more litigious, trademark bullying is quite common. The term is used to describe a scenario of a trademark owner, usually a large corporation with deep pockets, threatening expensive legal action to prevent others from using trademarks that might potentially take market share away from the trademark owner. A trademark bully resorts to making threats of legal action against another person when it is rather clear that the alleged infringer is operating within the bounds of trademark law. Trademark bullies do this because they know that the other person has little money and will back down or eventually go out of business.

The two parties were scheduled to go to trial last week but instead reached a settlement out of court. Prunier, who compared her struggle to that of David versus Goliath, will be able to continue using the Willa name for her products, however her attorney declined to provide additional details about her settlement. Because the trademarks appear to be very similar, it is very possible that some sort of license agreement was worked out in which P&G would own the trademark but Ms. Prunier is allowed favorable terms of use.

The Willa products are scheduled to be released in the coming months at U.S. retailers Target and J. Crew.

 

October 17, 2011, by Mandour & Associates, APC

Los Angeles – The cultural phenomenon known as ‘Jersey Shores’ is a reality television series following the lives of young, twenty-somethings as they flex their tanned muscles for MTV viewers. The show has catapulted the cast members into fame and fortune and has landed them many endorsement deals including Reebok, Devotion Vodka, and General Nutrition Center (GNC.) Now, one of the most popular cast members has landed himself somewhat of a legal “situation” over an alleged trademark infringement.

Mike ‘The Situation’ Sorrentino threatened to sue a guido lifestyle company for allegedly profiting from his ‘GTL’ trademark. ‘GTL’, which stands for GYM TAN LAUNDRY was famously coined by Sorrentino to indicate the three most important aspects of looking good. Sorrentino’s attorney sent a cease and desist letter to a website called MyGTLFuel.com demanding that it stop using his trademark slogan or he would file a trademark infringement lawsuit.

Apparently, the company wasn’t intimidated by The Situation’s biceps and continued to sell its tanning and energy drink products using the ‘GTL’ name. In response, Sorrentino filed a trademark infringement complaint against the company, requesting a permanent injunction to prohibit the company from selling products under the ‘GTL’ name and to destroy any infringing merchandise the company may have.

MyGTLFuel.com, which developed its signature “test tube shooter” energy shots is claiming that no trademark infringement took place because Sorrentino does not have exclusive rights to ‘GTL’. The United States Patent and Trademark Office website indicates that MyGTLFuel.com registered for ‘GTL Fuel” in February 2011 in the class for energy drinks, six months before Sorrentino himself registered ‘GTL’ for dietary supplement drinks and other meal replacements, which is still under review at the USPTO.

There is no doubt that there is similarity between ‘GTL Fuel’ and ‘GTL’ but it will be up to a judge and jury can determine whether the similarity is likely to cause confusion with consumers. One thing for sure is the Florida-based MyGTLFuel.com, founded by two nightclub promoters in 2009, will have to prove how the name of the company was derived.

Dana Valentino, co-owner of MyGTLFuel.com said he believes he can come to an amicable agreement with Sorrentino, however he will continue to defend his business.

 

October 11, 2011, by Mandour & Associates, APC

Los Angeles – The San Francisco Giants have been sued for using their stylized “San Francisco” logo on merchandise. Though the Giants have been using the script “San Francisco” logo since 1993 on baseball merchandise and apparel, neither the San Francisco Giants nor Major League Baseball have registered the logo as a trademark.

A very similar logo was registered, however, by Gogo Sports, a company that manufactures and sells unlicensed apparel and merchandise. Gogo Sports was granted trademark registration for its script logo in March, 2011. Subsequently in April, 2011, MLB attempted to register the San Francisco Giants’ script logo as a trademark. However, registration was denied by the USPTO who found that a “nearly identical” trademark had already been registered to Gogo Sports. Neither Major Leage Baseball nor the Giants opposed Gogo Sports’ application for registration.

After receiving a cease and desist letter from Major League Baseball, Gogo Sports brought an action against the San Francisco Giants and MLB seeking a declaratory judgment clarifying Gogo Sports’ ownership of the trademark.

Though Gogo Sports was the first party to register the trademark, it may be unable to establish priority over the trademark before the court. If the Giants are able to demonstrate use in commerce beginning in 1993, Gogo Sports will not have priority over the trademark. Generally, trademark rights belong to the party that can demonstrate priority of use in commerce. The Giants’ rights in the trademark are likely to stem from use in commerce rather than registration. Even though the Giants’ trademark was unregistered, if it can show priority over Gogo Sports they are likely to prevail in the action.

While the trademarks are not identical, it is possible that the court will consider them confusingly similar. There are subtle differences to the two designs. For example, the Gogo Sports logo runs horizontally while the Giants’ logo, in contrast, angles upwards from left to right. In addition, the Gogo Sports logo features the word ‘California’ in the tail of the ‘O.’ The Giants’ logo features an artistic tail on the letter ‘O’ as well, but the tail does not contain the word ‘California.’

Despite their differences, the USPTO described the two trademarks as similar or “nearly identical” when it rejected the Giants’ application.

October 11, 2011, by Mandour & Associates, APC

Los Angeles – Two and a half years after initially attempting to trademark the word ‘Tweet’, Twitter has finally been awarded exclusive rights to the trademark by the United States Patent and Trademark Office.

It all started when Twittad, a Des Moines, Iowa-based startup which is the largest advertising platform on Twitter, grabbed the word ‘Tweet’ first. Apparently, in 2008, one year before Twitter registered ‘Tweet’ with the USPTO, Twittad had registered the word in its slogan, “Let Your Ad Meet Tweets.” Twittad sells ads on Twitter by connecting advertisers willing to pay a price per tweet to regular users who fit their demographics requirements willing to be paid to “tweet” sponsored ads.

Twittad’s registered slogan competes with Twitter’s own Promoted Tweets advertising product. Although not stated in Twitter’s trademark infringement complaint filed just last month, it was most likely the motivation behind the lawsuit. Excerpts from Twitter’s complaint read:

“<em>Defendant’s LET YOUR AD MEET TWEETS registration unfairly exploits the widespread association by the consuming public of the trademark TWEET with Twitter, and threatens to block Twitter from its registration and legitimate uses of its own trademark. In fact, it appears that Defendant has used LET YOUR AD MEET TWEETS solely as a generic phrase to refer advertising in connection with Twitter itself, and as such it is incapable of serving as a trademark, rendering the registration subject to cancellation on that ground</em>.”

Luckily for Twitter, the judge agreed with its argument that “tweet” was a word that Twitter had made famous before Twittad registered the trademark. After the ruling, Twittad CEO James Eliason confirmed that Twitter has agreed to drop the lawsuit provided that Twittad hands over trademark rights. Eliason would not comment on whether money was exchanged for abandonment of the trademark.

“We’ve arrived at a resolution with Twittad that recognizes consistent use of Tweet while supporting the continued success of Twitter ecosystem partners like Twittad,” Twitter spokesperson Lynn Fox said in a comment.

October 10, 2011, by Mandour & Associates, APC

Los Angeles – The United States Patent and Trademark Office (USPTO) has recently registered a trademark to Microsoft Corp. for its design for a retail store that will sell tech-related products.

The new trademark will cover the design of “a retail store with four curved tabletops at the front and rear sidewalls and a rectangular band displaying changing video images on the walls.” The goods and services covered under the trademark to be offered at the stores include computers, computer hardware & software, computer games, portable music players and accessories, cell phones and accessories, video game consoles and accessories, webcams, books, clothing, back packs, messenger bags, computer bags, and novelty items.

Spring-boarding off of the success of the Apple retail stores, Microsoft has plans to open seventy-five retail stores across the United States, with the first stores most likely to launch near the headquarters of the Redmond, Washington-based company. No word yet on whether Microsoft will mimic the clean, simple design that has made the Apple stores so appealing to consumers.

Regardless of store design, Microsoft will run into problems if its stores aren’t filled with products that people are interested in buying. With little in its portable media device portfolio to rival that of Apple, it will be interesting to see the public’s response to Microsoft stores popping up in malls across the country.

Nevertheless, the computer software giant, founded in 1975 by Bill Gates and Paul Allen, has been dropping hints at good things to come from its partnership with Nokia, the Finnish designers who have created some of the most popular products in the cell phone industry. Despite some tech critics’ opinions that Microsoft retail stores will likely fall flat, Microsoft is smart to obtain the trademark to protect itself from potential copycats. Apple recently had to take legal action in a similar situation against a company in China that was copying the look and feel of the Apple stores which was confusing consumers in China into believing that they were in an Apple store when in fact they weren’t.

October 7, 2011, by Mandour & Associates, APC

Los Angeles – Teachbook, a social networking website created for teachers, will not be allowed to dismiss a trademark infringement lawsuit filed by social networking giant Facebook, a federal judge ruled.

After Teachbook filed a motion to dismiss the lawsuit and submitted over 300 pages of exhibits, most of which were taken from Facebook’s website to support its argument, U.S. District Court Judge Marvin Aspen declined to give judicial notice to Teachbook’s exhibits and denied the motion to dismiss. The judge noted that Facebook’s name-recognition was the major reason for denying Teachbook’s motion, and that it was undeniable that a likelihood of confusion could exist between the two websites.

The creators of Teachbook marketed their website for school-teachers to have access to a social networking site, where their profiles could only be viewed by other teachers and school administrators. Many school districts have enacted strict policies restricting their teachers from having profiles on Facebook and Myspace, since personal information from their profiles could eventually be viewed by students.

A statement from Teachbook’s argument said, “With Teachbook, you can manage your profile so that only other teachers and/or school administrators can see your personal information, blogs, posts, and so on. Teachbook is all about community, utility, and communication for teachers.”

However, attorneys for Facebook argued that Teachbook’s statements were a weak attempt to create a “substitute for Facebook,” claiming that the infringing networking site adopted the ‘Teachbook’ trademark with knowledge of, and the intent to call to mind and create a likelihood of confusion with regard to, and capitalize on the recognition and success of the ‘Facebook’ trademark. Facebook also argued that the use of the ‘Teachbook’ trademark, in conjunction with the substantially similar services Teachbook offers, dilutes the ‘Facebook’ trademark.

Unfortunately, for Teachbook, the judge agreed with the plaintiff, and claimed that the materials that Teachbook presented were inappropriate for the court to review at this point in the litigation. “Allowing Teachbook to cherry pick portions of Facebook’s website to introduce via a motion to dismiss simply because the complaint implicates the two websites would convert an examination of the complaint into a full-blown summary judgment analysis,” the judge wrote in his decision.

Judge Aspen concluded, “Given the ubiquity Facebook claims that its trademark has achieved, one could reasonably infer that the choice of the ‘Teachbook’ trademark – which, like the ‘Facebook’ trademark, is a curt, two-syllable conjunction of otherwise unremarkable words – to offer a similar service in the same medium was no accident.”

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