October 2011

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.

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.

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.

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.

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.”