July 2012

July 27, 2012, by Mandour & Associates, APC

Los Angeles – Eastland Music Group must have been extremely disappointing when it learned that Lionsgate, along with Summit Entertainment and Mandate Pictures, successfully defended the rights to use “50/50″ in the title of a film starring Seth Rogen and Joseph Gordon-Levitt.

Eastland Music Group filed the lawsuit last year in Illinois, claiming that it had been using the words 50/50 in relation to entertainment services for over 12 years. Because of this long-term utilization of the trademark, Eastland argued that it had the rights to exclusive use of the trademark 50/50 in connection with entertainment services and products. According to court documents, Eastland claimed that Lionsgate, Summit and Mandate were harming recognition, confusing consumers, and damaging goodwill by making the critically acclaimed movie 50/50, and further damage would occur if the movie were released on DVD. The Illinois entertainment company asked the court for an injunction to stop the release of the DVD.

Fortunately for the makers of the award winning film, U.S. District Court Judge George Lindberg did not agree with the plaintiff’s assertions and accepted a motion to dismiss Eastland’s trademark infringement claims. In his decision, Judge Lindberg applied a standard industry test which dictates that a movie’s name must be explicitly misleading and devoid of artistic relevance in order to be considered a misleading title. In this instance, 50/50 referred to Gordon-Levitt’s character and his struggle to fight his fifty percent odds of surviving a rare form of spinal cancer. After watching the movie, Judge Lindberg determined that there was no possibility of confusion between the movie and Eastland’s music related use of the trademark 50/50. As such, the case has been dismissed against Lionsgate, Summit Entertainment and Mandate Pictures and the DVD will be released as planned.

 

July 23, 2012, by Mandour & Associates, APC

Los Angeles – Imagine a world where legions of humans are inflicted with a terrible virus that turns them into flash-eating monsters. Zombie fans were given reason to rejoice when Paramount Pictures filed trademark applications with the United States Patent and Trademark Office to register the enormously popular World War Z concept for use with video games. Evidently, gamers will be treated to games based on the wildly popular Zombie books by Max Brooks. Brooks’ original novel, The Zombie Survival Guide, was released in 2003 and quickly became a cult classic. The apocalyptic author’s second zombie novel, World War Z: An Oral History of the Zombie War, was released to critical acclaim in 2006 with movie rights quickly purchased in 2007.

The World War Z trademarks were originally filed back in May, 2011 for use on mugs, beverage glassware, waste baskets, figurines, key chains, statutes, various types of apparel, masks, Halloween costumes, action figures, board games and toy model hobby craft kits. The most recent applications, quite possibly in anticipation of the movie being released in June 2013, were filed July 10th. The trademark applications were filed in order to secure the trademarks for use with various video game platforms. The USPTO website further reveals that the World War Z trademarks were intended for use with “entertainment services, namely, providing online electronic games, downloadable electronic game programs, electronic game software for handheld electronic devices, video game cartridges and discs”.

Undoubtedly, a deluge of World War Z products will hit the market in the summer of 2013 when the movie is released. The movie will star Brad Pitt.

July 11, 2012, by Mandour & Associates, APC

Los Angeles – In a recent dispute over Google’s AdWord policy, the owners of Cybersitter are suing Google and Net Nanny for trademark infringement. Cybersitter, specializing in adult content blocking software, is alleging that its rival Net Nanny paid Google to show Net Nanny ads any time Google users conducted searches for “Cybersitter”. Cybersitter argues that the ad copy for Net Nanny sometimes included its name and slogan “Protect you child with #1 rated Cybersitter software”. According to paperwork filed in court, Cybersitter insists that this type of subterfuge on the part of Google amounts to trademark infringement.

Cybersitter lists both Google and Net Nanny as defendants in the lawsuit, filed in Los Angeles in U.S. District Court, Central District of California. The court documents allege that both defendants “intentionally and wrongfully used bait and switch strategies to confuse consumers into purchasing a competing product.” However, it is important to note that Cybersitter did not allege in its court documents that Google had been contacted about the Net Nanny ads. Experts surmise that the case may not have much chance for success against Google, because the Internet search giant should have been given the opportunity to fix the problem prior to litigation.

Google representatives claim that the case is without merit and vow to clear Google’s reputation in court. In the past, Google has successfully defended itself against similar lawsuits. Two such trademark infringement cases were won by Google, and the rest were withdrawn or settled. However, on April 4th, 2012, the Circuit Court of Appeals reversed one of the decisions that had been handed down in Google’s favor. At the district court level, Google had won a summary judgment against language learning software company, Rosetta Stone.

Similar to the Cybersitter case, searches for Rosetta Stone yielded results that directed consumers to a different company website and persuaded them to purchase products other than the Rosetta Stone learning programs. Consequently, Rosetta Stone alleged that Google’s AdWord policies confused consumers and infringed on its trademarks. The Appeals Court ruled that Rosetta Stone should have been allowed the opportunity for a trial to determine whether the AdWords policy had confused consumers by allowing the company’s trademarked name to trigger pay-per-click ads for a competitor.

Cybersitter is owned by Solid Oak Software, located in Santa Barbara, California. Net Nanny is owned by ContentWatch, an Internet management solutions company, based in Salt Lake City, Utah. Both companies specialize in the latest Internet technology designed to assist in blocking adult content from computers used in schools, businesses and government offices. A decision on the Cybersitter, Google, Net Nanny case is expected to be handed down in the oncoming months and may result in a re-evaluation of Google’s AdWord policy.

 

July 6, 2012, by Mandour & Associates, APC

Los Angeles – Athletic goods heavy weights Rawlings Sporting Goods and Wilson Sporting Goods are battling it out in a federal court over trademark infringement. The most recent competition between the two legendary sports equipment giants concerns the unauthorized use of Rawlings’ Gold Glove trademarks.

Wilson has allegedly been producing baseball gloves with gold-colored webbing and has been featuring them in promotional materials. According to court documents filed Thursday in St. Louis, Cincinnati Reds second baseman Brandon Philips has been featured in Wilson materials holding a Wilson baseball glove. The glove in itself is not controversial. However, the fact that the glove is resplendent with gold-colored webbing, stitching and lettering, is problematic. Court documents show assert that Brandon Phillips won a Rawlings Gold Glove Award in 2011, but was later given a golden glove from Wilson that is confusingly similar to Rawlings’ trademarked Gold Glove.

Rawlings also claims that the Gold Glove is one of the most prestigious awards in baseball. Because of this prestige, Rawlings has trademarked the words “Rawlings Gold Glove Award”, “Gold Glove Award”, and the distinctive golden baseball glove image that makes the award instantly recognizable. According to the United States Patent and Trademark Office, Rawlings initially filed the registration paperwork for its Gold Glove Award back in 1973. However, the St. Louis Sports purveyor has been giving out its famous Gold Glove Award since 1957 and has distributed 981 since the award’s inception.

Rawlings also gives winners a golden baseball glove with its unique golden stitching, webbing and markings. By giving out similar golden colored baseball gloves, Rawlings insists that Wilson is diluting the distinctiveness of its carefully constructed brand image and eroding the public’s exclusive association between the trademark and high quality Rawlings’ products. Furthermore, Rawlings asserts that Wilson’s use of a golden glove tarnishes the reputation of the trademarks and lessens the public’s capacity to identify and distinguish Rawlings’ goods and services. Rawlings is seeking a court order to prevent its competitor from producing, manufacturing, distributing or using its trademarks in promotional materials.