April 2012

April 23, 2012, by Mandour & Associates, APC

Los Angeles – LMFAO, the electronic pop duo with chart topping hits including “Sorry for Party Rocking” and “Sexy and I Know It” was recently required to reveal the meaning of its name in trademark filings. To this point it has been a mystery with much speculation as to what the acronym of the Los Angeles based pair really stood for. Included in the speculation were names such as “Loving My Friends and Others.”

Trademark Attorneys representing LMFAO have recently filed four trademark applications with the U.S. Patent and Trademark Office. In the ‘Miscellaneous Statement’ portion of the applications it is stated that “the term LFMAO stand for “laughing my freaking ass off.” Apparently, parents can breathe a sigh of relief that the ‘F’ stands for “freaking” as opposed to a certain four letter word that many claimed it to be. In 2008, when the band originally attempted to trademark its name, its applications were refused by the U.S. Patent and Trademark Office’s examining attorney who claimed that the trademark consisted of “immoral, deceptive, or scandalous matter.” In other words, trademarks with cuss words cannot be registered with the USPTO. With that lesson learned the band let those applications abandon and changed its strategy this time around.

The duo consisting of Stefan Kendal Gordy aka “RedFoo” and Skyler Austen Gordy aka “SkuBlu” have also filed for another questionable trademark containing a word that the USPTO may not approve. Appart from its envelope pushing trademark applications, the band has also filed for the “Party Rock” trademark. So, not only can you listen to LMFAO on the radio but you can also wear its “Party Rock” clothing as LMFAO are the owners of trademark registrations Nos. 4,010,158 and 4,013,318 for “Party Rock” in class 25 for apparel.

April 19, 2012, by Mandour & Associates, APC

Los Angeles – The U.S. Court of Appeals for the Fourth Circuit has given Rosetta Stone the opportunity to once again try and prove that Google committed trademark infringement on several of its trademarks.

In 2009, the language software maker sued Google for trademark infringement and accused the web search giant of selling trademarked Rosetta Stone phrases to “phony” or “copycat” software makers who in turn were Rosetta Stone’s competitors. Rosetta Stone accused Google of allowing third party companies to purchase keywords such as its trademarked “Rosetta Stone” and “language library” so that when these words are searched sponsored ads of competitors appear. In response to this accusation a representative of Google stated, “We think that the legitimate use of trademarks as keyword triggers helps consumers to make more informed choices” and “For what remains of the case, we’re confident we will prevail on both the merits and the law.”

In 2010, the U.S. District Court for the Eastern District of Virginia dismissed Rosetta Stone’s lawsuit along with the allegations against Google. The Eastern District Court of Virginia concluded that selling keywords does not cause confusion to consumers searching for the goods of Rosetta Stone. However, this week in Richmond, Virginia a panel of three judges in the Court of Appeals unanimously overturned a majority of the lower court’s decision and now the case can be heard in federal court. Rosetta Stone’s accusations that Google committed trademark infringement and negatively impacted the Rosetta Stone brand will be reviewed once again.

Michael Wu Rosetta Stone’s trademark attorney stated, “We’re deeply concerned about trademark infringement including the rampant problem of inline counterfeiting confusing consumers regarding our products.” In its ruling, the Fourth Circuit of Appeals is directing the lower court to directly review just when Google began to “dilute” the trademarks owned by Rosetta Stone and if such trademarks were considered to be famous at the time.

In the original complaint filed against Google, Rosetta Stone claimed, “In April, 2004, Google adopted a policy change that permitted its customers to bid on third-party trademarks as keywords, even though its previous policy did not permit this if the trademark owner objected.” Rosetta Stone claimed that Google changed its policy so it would increase its revenue by an estimated billion dollars.

Companies such as Ford Motor, Coach and 1-800 Contacts are among the many supporters of Rosetta Stone as these large corporations have previously filed similar lawsuits against Google which were based on confusingly similar sponsored links. If the outcome of the case sides with Rosetta Stone then Google may be in jeopardy of losing a large portion of its search revenue.

April 11, 2012, by Mandour & Associates, APC

Los Angeles – In a case that has garnered international media attention over the shooting death of a seventeen-year-old Florida boy, the boy’s parents are attempting to trademark phrases chanted in rallies organized to pressure police into making an arrest in the boy’s death.

Teenager Trayvon Martin was shot to death February 26th by a neighborhood watch patrolman, who claims he acted in self defense against the un-armed youth. The phrases “I am Trayvon” and “Justice for Trayvon” have been repeatedly chanted by supporters outraged over the fact that police have not arrested George Zimmerman on murder charges.

Trayvon’s parents insist that they are not trying to make money off of their slain son, but want to secure the trademarks to spread awareness about the case. Last week, Trayvon’s mother, Sabrina Fulton, applied to register the two trademarks with the United States Patent and Trademark Office. The trademark applications cover digital media, CD’s and DVD’s.

“We just appreciate the support that we’ve been receiving,” Fulton stated to news reporters last week. “We’re thinking about next steps and the plans we need to take right now to try to get some justice for our son.”

The trademark attorney representing the family indicated that the family wanted to register the trademarks over fear that people would try to profit by exploiting their son’s death. One example the lawyer gave was someone falsely claiming to be raising funds for the family. Besides the issue of preventing others from exploiting the family’s tragedy, the lawyer also stressed that another purpose of the trademark filings was to keep putting pressure on the Sanford, Florida police to make an arrest in the case.

Trayvon’s family is reportedly planning to start a foundation in the teen’s name and wants to protect the phrases for the foundation’s future use. The family’s goal of the foundation is to help others dealing with similar issues.

Just days after Trayvon’s mother filed her trademark applications, Los Angeles musician Marcus Singletary applied for the trademark “Justice for Trayvon” to appear on hooded sweatshirts. Singletary cited that he is interested in providing assistance to the family if the product is successful. He indicated that he wants to sell the hooded sweatshirts in protest to some popular media figures who felt that it was significant to claim that the teen was possibly shot over appearing suspicious because of his wardrobe choice, a hooded sweatshirt.

April 2, 2012, by Mandour & Associates, APC

Los Angeles – Chrysler Group LLC and Pure Detroit are headed off to mediation after a year of battling over the ‘Imported From Detroit’ trademark. The lawsuit stems from March 2011 when Chrysler sued Pure Detroit and its owners for using the phrase ‘Imported From Detroit’ on T-shirts in its retail and online stores. In 2011, Chrysler had just launched its new campaign for the Chrysler 200 in a two-minute television commercial during the Super Bowl XLV in which it used the slogan ‘Imported From Detroit’. Chrysler claimed that Pure Detroit began selling the ‘Imported From Detroit’ T-shirts directly after that Super Bowl in which its campaign was launched.

In the following month of April 2011, Pure Detroit countersued Chrysler claiming that it did not have a valid use to the trademark because the “phrase is geographical, descriptive and arguably misleading.” Pure Detroit’s claim was also based on the fact that the auto company is based in Auburn Hills, Michigan and the assembly of the Chrysler 200, as shown in the advertising campaign, was assembled in Sterling Heights, Michigan. Also stated in the lawsuit was Chrysler’s request that the court allow ceasing all sales of Pure Detroit’s T-shirts that used the slogan. However, after reviewing the case, Judge Arthur Tarnow of the U.S. District Court rejected Chrysler’s motion because there was no evidence that the automaker would suffer irreparable harm if the T-shirts were available for purchase. Therefore, throughout the lawsuit Pure Detroit has continued selling T-shirts using the slogan ‘Imported From Detroit”.

Pure Detroit is owned by Moda Group LLC, a merchandise retailer with ties to Detroit, who in April 2011 filed a letter of protest with the U.S. Patent & Trademark Office against the ‘Imported From Detroit’ trademark for “varying uses of the phrase.”

In a statement posted on its website Pure Detroit states, “Chrysler does not have exclusive rights to the phrase “IMPORTED FROM DETROIT” because it is merely descriptive and not a protectable trademark.” Chrysler confirmed the agreement to use mediation but had no further comment. Both companies have until April 3, 2012, to inform the court if an agreement has been reached through mediation.