June 2012

June 29, 2012, by Mandour & Associates, APC

Los Angeles – Last week, Anheuser-Busch announced that it filed a trademark application for BNA which is the airport code for the Nashville Airport. Anheuser-Busch filed for “BNA” along with 41 other airport codes. However, Nashville winery BNA Wine Group insists that it has superior rights to the trademark “BNA” and filed before Anheuser-Busch. The fact that two companies plan to utilize the same trademark is not necessarily a problem in itself. However, because both parties intend to name alcoholic beverages after the airport code and distribute those products in the same area, it is anticipated that problems will ensue for one or both parties.

Although there is a chance that both groups could obtain rights to the trademark “BNA”, it is highly unlikely. Despite the fact that beer and wine are obviously two different beverages, both companies are in the business of selling alcohol and there is not a significant division between the core business and distribution of the two companies. Consequently, if Anheuser-Busch produced an alcoholic beverage with the same name as a wine produced by the BNA Wine Group, it would likely cause confusion with consumers and distributors. Such confusion is adequate grounds for USPTO denial of trademark registration for one or both parties.

Regardless of the potential confusion, It is likely that the USPTO will suspend action on the Anheuser-Busch trademark application until the registration for BNA Wine Group is complete.

Last year Anheuser-Busch also registered 14 area codes with the USPTO, including “615″, an area code in Nashville. The move was part of a plan to cash in on the popularity of locally labeled beers and microbrews produced by hometown breweries. As part of this plan, Anheuser purchased Goose Island Brewery in Chicago last year and noted tremendous success with its locally produced 312 Urban Wheat Ale. Anheuser-Busch anticipates the same success with the BNA labeled beer if and when it is allowed to register the trademark.

June 20, 2012, by Mandour & Associates, APC

Los Angeles – Can a designer obtain trademark protection for a specific color used on the soles of its shoes? This question appears to be one step closer to finality after a recent decision was handed down by a French court against designer Christian Louboutin.

The case was initiated in 2008, but Louboutin did not exhaust all of its appeals against Spanish fashion designer Zara until this week. Louboutin had accused the Spanish designer of counterfeiting and unfair competition, claiming that red-soled shoes have been the signature trademark of its shoe collection for over twenty years.

This case is particularly interesting because of its implications for the ongoing battle in a New York Appeals Court between the famous shoe designer and its rival Yves Saint Laurent. Louboutin also sued its competitor Yves Saint Laurent in 2011 over what it considered a trademark infringement of the red sole on its shoes. The lower court rejected Louboutin’s request to stop the sale of YSL’s similarly colored shoes and denied a request for $1 million in damages. A decision has not yet been reached by the new panel of judges in the current appeal. However, Louboutin is relying on the same argument used by Tiffany & Co. in a recent lawsuit against one of its competitors for its trademark blue boxes. Tiffany won its trademark infringement case by showing that consumers recognized the blue box exclusively as that associated with the Tiffany & Co. brand. A decision by the New York Appeals court is highly anticipated by a number of designers who either currently use red on the soles of their shoes, or would like to incorporate the popular trend in their own footwear lines.

Louboutin quickly released a statement after the findings were handed down in its most current lawsuit. The Paris based company is anticipating that its competitors will see this latest decision as diminishing or eliminating its rights to the famous red sole on its shoes. However, Louboutin claims that it continues to own valued and enforceable trademark rights to its red sole trademark in France and the rest of the world. Louboutin also claims that other court decisions have recognized the strong association between Christian Louboutin and its red sole trademark. As such, Christian Louboutin insists that it will continue to enforce and protect its rights to its red sole trademark.

June 14, 2012, by Mandour & Associates, APC

Los Angeles – Mag Instrument, the owners of a family of trademarks including “Mag-Lite”, has reportedly filed a lawsuit against Larson Electronics in federal court this week. The complaint, filed in U.S. District Court for the Central District of California in Los Angeles, alleges that Larson Electronics’ use of the Magnalight trademark infringes on Mag Instruments’ registered trademarks. In response, Larson Electronics argues that it has priority use of the Magnalight trademark, since it has been manufacturing and distributing the product since 1973. The Mag-Lite trademark was registered with the United States Patent Trademark Office in 1979. Mag-Lite is claiming that it registered its trademark prior to Magnalight and since the trademark is confusingly similar to the Mag-Lite trademark, Larson Electronics must cease and desist the use of the product name Magnalight.

According to the USPTO website, Larson Electronics filed an Application in November 2011 to protect the Magnalight trademark. However, State and federal laws dictate that the first user of a trademark generally has superior rights regardless of filing a trademark application. As such, generally speaking registration of a trademark with the USPTO does not trump the prior unregistered common law rights of a party using a trademark for a longer period of time. The rights of the senior user of a trademark can continue as long as the trademark is also used continuously, and are not erased simply because another user files registration paperwork.

Larson Electronics, based in Kemp Texas, is best known for its distribution of industrial and commercial grade lighting products. Magnalight flashlights and lighting products have been distributed in the U.S. and Canada for over 44 years. A hand-held light with a magnetic base, the lights were intended for portable use on a vehicle or other metal device, to provide a well-lit work area. Magnalight handheld portable lights are sold today across a wide spectrum of consumers, including many of the same customers that it sold to in 1973.

Headquartered in Ontario Canada, Mag Instrument considers itself a leader in the portable lighting products industry. Though Mag Instrument was founded in 1955, it was not incorporated until 1974. The company’s primary focus was creating flashlight products for the public safety sector. To that end, it’s well-known line of flashlight products were introduced in 1979 and quickly became best sellers.

June 11, 2012, by Mandour & Associates, APC

Los Angeles – Larry, the blue bird Twitter mascot, has gone on a diet. Twitter has recently unveiled a new look for its trademarked blue bird logo that has some obvious changes as well as some not so noticeable changes.

The San Francisco based social media company took to Twitter to announce the change. Twitter’s creative director Doug Bowman tweeted, “Our new bird grows out of love for ornithology, design within creative constraints, and simple geometry. This bird is crafted purely from three sets of overlapping circles – similar to how your networks, interests, and ideas connect and intersect with peers and friends. Whether soaring high above the earth to take in a broad view, or flocking with other birds to achieve a common purpose, a bird in flight is the ultimate representation of freedom, hope and limitless possibility.”

The main differences in Twitter’s logo appear to be the following: the new bird appears to be leaner, the tuft on the top of the birds head is no longer there, the new bird is looking up rather than straight ahead, the wing of the bird is facing upward rather than downward, and the color blue is a darker shade.

Twitter appears to be flying high above many other social media sites with its 140 million active users, and is on its way to soaring as high as its competitor Facebook. According to Reuters, Twitter is rumored to be the next best company for an IPO and may follow in Facebook’s footsteps. It is estimated that this year Twitter will reach $260 million in revenue.

Just as many consumers can immediately recognize popular logos such as the Nike swoosh, the golden arches of McDonald’s, and the Microsoft Windows logo, Twitter is assured that its blue bird logo will be among this list as one of the most recognizable icons. A tweet posted on Twitter mentioned this goal by saying “from now on, this bird will be the universally recognizable symbol of Twitter,” and “there’s no longer a need for text, bubbled typefaces, or a lowercase ‘t’ to represent Twitter.”

June 6, 2012, by Mandour & Associates, APC

Los Angeles – In a lawsuit filed last Friday, the Obama Re-election Campaign Committee is suing website Demstore.com for selling merchandise utilizing its trademarked “O” logos and artwork. An identical lawsuit was filed in Chicago for similar Obama infringement issues in 2011.

The current lawsuit filed in Washington claims that the D.C. website, which primarily sells Obama election merchandise, is illegally selling products with two of its trademarked logos. One logo included in the lawsuit is the 2012 campaign logo utilizing the signature “O”. The other logo in question is what is commonly referred to as the “rising sun” logo, and includes a blue “O”, with red and white stripes at the bottom. The lawsuit against Demstore.com is asking for a court ordered injunction preventing the use of the logos, as well as damages.

In a world of websites that can appear and disappear practically overnight, trademark infringement can become a huge problem. Public figures can be particularly vulnerable since they are often widely recognizable and do not have legal teams in place to handle each and every infringement. In addition, the infringers are often hard to locate and even more difficult to bring into court.

Demstore.com is a democratic website owned by Steve Schwat. Schwat, who also owns Washington Promotions and Printing, registered Demstore.com and its company logo with the United States Patent and Trademark Office in 2003 and achieved registration in August 2007. The Maryland based company’s USPTO registration was granted for retail store services, mail order sales, online retail store services, online ordering, and retail store services that feature phone-in or online orders in fields of apparel, books, stickers, buttons, jewelry, magnets, flags, signs, house wares and balloons. The company claims that it has been creating and selling various democratic campaign materials since 1985. While the website is primarily geared toward the re-election of Obama, materials from the 2008 election are also being sold.