November 2011

November 28, 2011, by Mandour & Associates, APC

Los Angeles – Much to the chagrin of players in the mobile market, Apple has managed to register the trademark for the term “App Store” for its iTunes App Store. However, now that Amazon is calling its Android app sales portal the “Amazon Appstore,” Apple has been trying to fight it in a trademark infringement lawsuit since March.

Apple has amended its March trademark infringement complaint against the Amazon to include allegations of false advertising. In its complaint, Apple claims that its iOS mobile operating system brand is synonymous with the words “App Store” and thus allowing Amazon to use it creates confusion among consumers that will damage Apple’s brand and revenue.

As for its false advertising claim, Cupertino-based Apple is referring to the Amazon Kindle Fire. Apple is alleging that Amazon has downplayed the Android identifier with its advertisements for the low-priced wireless tablet. Apple claims that by not advertising the Kindle Fire as an Android device, there exists even more likelihood of confusion between “App Store” and “Appstore.” A statement from Apple’s filing indicates:

“<em>Amazon’s use is also likely to lessen the goodwill associated with Apple’s App Store service and Apple products designed to utilize Apple’s App Store service by associating Apple’s App Store service with the inferior qualities of Amazon’s service.”</em>

The damage that Apple is referring to is directly associated with the type of business Amazon operates in its Appstore. Apple claims that while it has tight controls to ensure that only quality apps are made available in its iTunes App Store, Amazon doesn’t do as much to prevent issues like malware or the misappropriation of user data. Apple says that it is concerned that this alleged lack of quality control will cause harm to the Apple brand by association through the use of the term “Appstore.”

In response to Apple’s trademark infringement and false advertising claims, Amazon as well as Microsoft and Google argue that “app store” is a generic term for any online app distribution portal and that Apple should not have exclusive rights to the trademark. Amazon also argues that no harm has been done to Apple by its use of Appstore.

There’s no doubt that Apple is feeling the heat from Amazon’s recent release of its Kindle Fire tablet. With a price tag under $200, it undercuts the majority of the mobile media device market.

November 22, 2011, by Mandour & Associates, APC

Los Angeles – A Trademark dispute concerning Fruit Loops mascot Toucan Sam was recently resolved without litigation. The dispute began when cereal maker Kellogg asked San Francisco based cultural heritage group the Mayan Archaeology Initiative (MAI) to cease using a logo that Kellogg claimed was too familiar to the well-known Fruit Loops mascot, Toucan Sam.

Both MAI and Kellogg’s Fruit Loops cereal feature a toucan in their logos. While the Fruit Loops mascot is seen on advertisements and cereal boxes in a variety of poses and situations, the MAI logo consists of a toucan in front of a Mayan style pyramid.

Kellogg alleged in its cease and desist letter that MAI’s continued use of the toucan logo could lead to consumer confusion and dilution of Kellogg’s trademark.Trademark dilution occurs when a non-competing good features the same or similar trademark. Use of the trademark on non-competing goods threatens to destroy the distinctiveness of a trademark by reducing the association between that trademark and the original product.

In this case, Kellogg claimed that its cereal products, including Fruit Loops were successful in Guatemala and that Guatemalans identified the toucan mascot with the cereal. Kellogg also argued that Toucan Sam has also been depicted in front of a Mayan style backdrop. Kellogg alleged that MAI’s continued use of the trademark would threaten the distinctiveness of the trademark as consumers may come to associate a cartoon toucan with a source other than Kellogg.

Though Kellogg attorneys claimed MAI’s mascot was confusingly similar to Toucan Sam, MAI officials replied that there was little similarity between the two logos and that MAI hoped to resolve the matter out of court. According to a joint statement released by Kellogg and MAI, the dispute has been resolved. Kellogg agreed to donate $100,000 to MAI to aid an MAI project. Kellogg has also agreed to advertise accomplishments of the organization on its website as well as its cereal boxes.

November 14, 2011, by Mandour & Associates, APC

Los Angeles – Switch Communications Group, LLC, the operator of a large data center in Las Vegas, has filed a trademark infringement lawsuit against a Canadian man over his registration of the switch.net Internet domain name last month.

The complaint, filed on Wednesday in a Las Vegas federal court, alleges that Dorian Banks of Vancouver, British Columbia, not only violated its trademark but also violated the federal Anticybersquatting Consumer Protection Act. According to the Switch complaint, Banks had a “bad faith intent to profit from registering, trafficking in or using a domain name or trademark that is either identical or confusingly similar to a distinctive trademark or a famous trademark.”

Switch Communications Group said in the lawsuit that it operates the “world’s most powerful data center and technology ecosystems” and has a website at switchnap.com. The company, which started eleven years ago in Las Vegas, now holds digital data for a number of Fortune 500 companies and the U.S. government in its large facilities.

In the lawsuit, Switch is charging that after Banks registered the switch.net domain name on October 15, he contacted the company and offered to sell it to them for about $3,700.

“While plaintiff evaluated the offer to negotiate the purchase of the domain name, defendant threatened to sell the domain name to another entity if plaintiff did not hurry and open escrow to buy the domain name,” stated trademark attorneys for Switch Communications.

Banks, the CEO of Metrobridge Networks International, Inc., a wireless Internet provider, denied the allegations. Banks claims that he had never heard of Switch Communications when he purchased the switch.net domain name at an auction. He also stated that the domain name was locked down after the auction because of a protest by another company in Switzerland called SWITCH, which offers Internet services in Switzerland. According to Banks, after the Swiss company rejected his registration of switch.net, he offered to sell it to the Las Vegas company for what he paid for it.

Switch Communications is requesting that the judge grant a restraining order requiring Banks to stop using Switch Communications’ names and trademarks and that the domain name registrar transfer over the domain name to Switch Communications.

November 10, 2011, by Mandour & Associates, APC

Los Angeles – As the Occupy Wall Street Movement receives increasing press coverage and national visibility, merchants have increasingly attempted to market related merchandise to protesters and supporters. As of November 10, 2011, several companies have filed for trademark protection for different trademarks and slogans related to the movement. The USPTO has recently received trademark applications from various merchants seeking to register trademarks such as “Occupy,” “Occupy DC 2012,” “We are the 99 percent,” and “Occupy Wall St.”

While businesses unrelated to the protests have filed applications for related trademarks, it was a coalition of Occupy Wall Street protestors who filed the trademark application with the USPTO for the phrase “Occupy Wall Street.” Wylie Stecklow, attorney for the protestors, stated that the trademark application was filed to prevent corporations from profiting from use of the Occupy Wall Street phrase. Stecklow claims that the movement is a protest of corporate greed and that allowing the movement’s name to increase corporate profits would be unfortunate. According to Stecklow, if registered, the trademark may still be used for non-commercial purposes.

Stecklow and the Occupy Wall Street protestors, however, were not the first to file a trademark application for “Occupy Wall St.” Instead, Robert and Diane Maresca filed an application with the USPTO for the trademark “Occupy Wall St.” almost a month ago. The Marescas claimed that they planned to use the trademark in conjunction with several products.

In order to receive a registered trademark, a trademark must be used in commerce in connection with the sale of goods or services. If the trademark is not in use at the time of the application, the applicant may file an intent to use application to reserve the trademark. An intent to use application requires a bona fide intent to use the trademark in commerce. However, if the trademark is already in use, the applicant intending to reserve the trademark may be unable to establish priority.

In this case the battle for the phrase “Occupy Wall Street” and related phrases will depend on the applicant’s ability to show priority, distinctiveness, and use in commerce. The Marescas may be unable to show priority over the trademark, which was in use by others before their application was filed. While they were the first to file, if another party can show use in commerce predating the Marescas intent to use application, the Marescas may not receive a trademark registration. On the other hand, many predict the protesters’ application will be successful, granting them trademark rights to the phrase, “Occupy Wall Street.”

November 2, 2011, by Mandour & Associates, APC

Los Angeles – After a devastating tornado in 2008 destroyed a high school in Chapman, Kansas, students and officials alike rallied behind school chants of the “fighting Irish!” depicted by their fighting leprechaun mascot and worked hard to rebuild the town’s beloved school. Now, three years later after Chapman refused to let the tornado destroy them, the University of Notre Dame sent the school a cease and desist letter informing it that its use of the leprechaun mascot was infringing on the powerhouse college’s Fighting Irish trademark.

Unable and unwilling to take on Notre Dame in a costly legal battle, the school decided to quit using the fighting leprechaun, much to the dismay of local citizens. From a legal standpoint, Notre Dame has a legal duty to protect an image it trademarked in 1981. The trademark “Fighting Irish” not only denotes a school with impressive academic and football programs, but it also generates a lot of money from the sale of university apparel and goods.

While this may seem unfortunate for the small school, had Notre Dame allowed the use it would have been unable to police un-authorized uses in the future. So, had it not acted, Notre Dame would have effectively forfeited its trademark. Notre Dame was founded in 1842 in South Bend, Indiana.

Is there really a valid concern that the high school’s use of the mascot in the fighting stance will in any way alter Notre Dame’s reputation or drain any money it receives from its trademark? Perhaps consumers might have only assumed that the schools were affiliated or that the high school was sponsored in some way, which is enough for trademark infringement to occur.

Apparently the Blessed Virgin Mary, the patron saint of the private Catholic university, will show no mercy to the quiet town located over 700 miles southwest of South Bend. The high school will now have to find a new mascot to rally its spirit back. Would anyone come after use of a growling cougar or bulldog? Apparently, by protecting its intellectual property rights, Notre Dame really lived up to the words of its Fighting Irish Victory march:

“Send a volley cheer on high, Shake down the thunder from the sky,
What though the odds be great or small, Old Notre Dame will win over all”