March 2013

March 20, 2013, by Mandour & Associates, APC

Los Angeles – Aereo, Inc. lost its bid for a temporary restraining order against Alki David and his Internet television service FilmOn.com, Inc. that would have prohibited David and the company from using the name Aero or the domain name Aero.tv until the trademark infringement lawsuit is over.

U.S. District Judge Audrey B. Collins of the Central District of California in Los Angeles denied Aereo’s ex parte application for the temporary restraining order in chambers without prejudice and without commenting on her decision.

In its bid for the temporary restraining order, Aereo claimed that FilmOn was intentionally using a similar domain name in order to profit off Aereo’s brand and claimed that it would be irreparably harmed if FilmOn were allowed to continue with its $100 million advertising campaign to promote the streaming services provided by Aero.tv.

New York-based Aereo said that FilmOn’s “actions infringe Aereo’s trademark rights and are intended to and likely to mislead the public into believing that ‘Aero’ is associated with Aereo.  The goodwill Aereo has developed will be permanently damaged by defendant’s uncontrolled use of its name, and the damage to plaintiff increases daily.”

Los Angeles-based FilmOn argued that a temporary restraining order was a drastic request.  FilmOn said that it has been using the AERO trademark in commerce in the United States since January 2011 and the trademark registered in early 2012, while Aereo only launched in February 2012.

FilmOn also argued that Aereo was unable to meet the burden of proof necessary for such an extreme request on an ex parte basis, claiming that Aereo’s assumption that it would be irreparably harmed by FilmOn’s use of the AERO trademark is misplaced and does not satisfy the legal requirements for obtaining a temporary restraining order.

Aereo filed the lawsuit in Los Angeles on March 6th as a response to FilmOn’s lawsuit seeking a declaratory judgment that FilmOn had rights to the AERO trademark.  Aereo’s complaint alleged that FilmOn deliberately chose a confusingly similar name for its online television service in order to benefit from the good will associated with the Aereo name.

The lawsuit is just another legal battle between David and Aereo backer Barry Driller.  A U.S. federal judge previously prohibited David from using BarryDriller.com and Aereokiller LLC to market rival online television services.

March 14, 2013, by Mandour & Associates, APC

Los Angeles – The Washington Redskins asked the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board to dismiss six petitions to cancel filed by a group of Native Americans, arguing that there is no evidence to support the group’s claim that a considerable percentage of Native Americans find the team’s name offensive.

At the hearing held last Thursday, the group of Native Americans argued that the NFL team’s name, former fight song, cheerleader outfits and halftime shows illustrate the team’s disparaging and offensive treatment of Native Americans.

The Washington Redskins’ countered that its name is associated with the team, football and the entertainment it provides at games and claimed that it has never used the name in order to perpetuate an ethnic slur or disparage Native Americans in any way.

The Redskins and the TTAB both pointed out that Native Americans would have had to have found the term Redskins offensive at the time the trademarks were registered in order for the Redskins trademark protection to be cancelled.  The six trademarks in question were registered between 1967 and 1990.

The Redskins argued that a group of five Native Americans claiming that the name is offensive is not evidence that the term is offensive to a significant amount of the Native American population.  Nor does the opinion of the five petitioners offer any evidence that Native Americans were offended by the name during the 23-year period when the trademarks were registered.

The Native Americans told the three-judge panel that the Redskins’ six trademarks they are petitioning fall under provisions of the Lanham Act that prohibit any trademark that is disparaging from being registered.

“We are focused on the word ‘Redskin’ and no other matter,” the Native American group argued.  “‘Redskin’ is an ethnic slur.  It is an epithet.”

Though the TTAB cannot prevent the team from using the name, the Native Americans hope that if the team loses trademark protection, it will be persuaded to rebrand the team.

The petitions, filed in 2006, are the second attempt to cancel the Redskins’ trademarks.  In 1992, a group of seven Native Americans petitioned to cancel the trademarks.  The TTAB granted the petition in 1999, but the U.S. District Court for the District of Columbia overturned it in October 2003 ruling that the petitioners did not have standing to complain because they did not take legal action until 25 years after the first trademark registered.

It could take up to a year for the TTAB to make a decision on the current petitions.