December 15, 2011, by Mandour & Associates, APC

Los Angeles – It would seem quite unusual for an academic institution like Brigham Young University (BYU) with a long tradition of conservative Mormon values to be interested in purchasing domain names that end in the newly created .xxx name, but that is exactly what is happening. However, the purpose is one of protecting BYU’s image. BYU along with other academic institutions and companies were given the opportunity to purchase .xxx trade domain names from ICM registry, the exclusive dealer in .xxx domain names, months before the .xxx names would be available to the public. The cost of each .xxx name is $200 dollars with at least one school, Indiana University, spending $2200 dollars to protect the school’s name from being confused with a pornography site.

Along with several academic institutions, companies such as Disney and Target have also followed suit to ensure that their consumers do not confuse their good name with an illicit pornography website. Meanwhile, ICM registry is likely to be the beneficiary of an enormous financial windfall. It’s expected that companies will spend up to $200 million purchasing between 3 to 5 million domain names in an effort to act defensively.

The creation of the .xxx domain name has been the result of a long and contentious 10 year legal battle between ICM registry and the Internet Corporation for Assigned Names and Numbers (ICANN). In March 2011, ICANN gave final approval of the .xxx domain name. Parent groups and employers supported the decision believing it would be easier to monitor children and their employees, respectively, by using filtering systems that could block the .xxx domain. Ironically, the pornography industry has been opposed to the .xxx domain decision due to what they believe is isolating the pornography industry into a “digital ghetto” on the internet.

December 5, 2011, by Mandour & Associates, APC

Los Angeles – The family of legendary reggae singer, Bob Marley, has filed a lawsuit citing both copyright and trademark infringement against Marley’s half brother, Richard Booker.

The lawsuit, filed Thursday in federal court by Marley’s widow Rita and their children, alleges that Richard Booker and companies that he is associated with have been using the now-deceased Rastafarian’s image, music, and other intellectual property without the permission of Marley’s family members.

Some of Booker’s businesses and projects that have been using Marley’s intellectual property are the annual Nine Miles Music Festival and the Bob Marley Movement of Jah People Inc., which handles all promotions for the music festival. Marley’s half brother is also said to own a restaurant in Jamaica, called Mama Marley’s. Richard Booker is the son of Marley’s mother, Cedella Booker. He currently resides in Miami, where he operates most of his businesses.

The lawsuit also claims that Marley’s heirs have long been in opposition to Booker’s attempts to trademark Marley-related names. They claim that at one point, they had reached a licensing deal with Booker but that he has since failed to carry out his end of the deal.

The Marley family is seeking unspecified damages and is also asking the judge to order an injunction on Booker’s use of any Marley-related references and imagery in present and future business ventures.

Marley, who died of cancer in 1981, was best-known as the lead singer and rhythm guitarist for the reggae band, Bob Marley and the Wailers. He is credited for introducing both Jamaican music and the Rastafari movement to a worldwide audience. Some of Marley’s best-known hits include, “Buffalo Soldier,” “I Shot the Sherriff,” “Could You Be Loved,” “No Woman, No Cry,” “Three Little Birds,” “Redemption Song,” “Stir It Up,” and “One Love.”

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”

October 25, 2011, by Mandour & Associates, APC

Los Angeles – Long Island couple Robert and Diane Maresca have filed a trademark application with the United States Patent and Trademark Office (USPTO) for the name “Occupy Wall Street.” The “Occupy” organization is responsible for the protests that have taken up Wall Street in New York City and other cities across the United States.

Occupy Wall Street is a revolutionary-type movement that began on September 17, 2011 in Liberty Square in Lower Manhattan’s Financial District and has spread to hundreds of cities both nationwide and globally. The movement has adopted a “power to the people” philosophy, fighting against the power of major banks and multinational corporations and Wall Street’s role of creating an economic collapse that has caused a global recession.

In their application with the USPTO, the Marescas are seeking to trademark the phrase so they can stamp it on a variety of products including t-shirts, bumper stickers, beach bags, footwear, umbrellas, and hobo bags. When the couple was asked whether they were being hypocritical by attempting to cash in on a movement that protests corporations and capitalism, they responded that they have a “practical business side” and added, “If I didn’t buy it and use it someone else will.”

The Marescas reportedly spent $975.00 on the October 18th trademark filing. According to the couple, when they initially did a trademark check on the USPTO database, they discovered that a Brooklyn resident had filed for the trademark for the phrase “We are the 99%.” The Marescas proceeded with their filing for “Occupy Wall Street,” believing it would be a more powerful brand.

Robert Maresca stated that he has visited the Occupy Wall Street protest site several times and is in agreement with the movement that major corporations have too much power and influence over our elected officials. The couple has yet to mass produce any goods with the “Occupy Wall Street” phrase but they have already inked some t-shirt designs and have sewed some clothing and bags in their Long Island home.

The Marescas describe themselves as being “relatively conservative” and are pro-union and politically independent. Robert Maresca, a former union iron-worker, said that his family has been greatly affected by the recession which followed him becoming disabled by a stroke and seizure.

October 19, 2011, by Mandour & Associates, APC

Los Angeles – U.S.-based dating website, Plentyofish.com was rejected by the High Court in England over its claims that it was entitled to assert rights over UK-registered trademarks because it had a high number of UK visitors to its website.

The claims were rejected after Justice Birss QC determined that Plentyofish Media did not actually have any paying customers in the UK and that it does not own any “goodwill” trademark rights over UK-based rival Plenty More LLP. The judge dismissed the U.S. site’s argument that Plenty More was attempting to “pass off” its dating website, Plentymorefish.com, as its being associated with the U.S. site. Plentyofish’s claims that the Intellectual Property Office (IPO) in South Wales had failed to apply UK trademark law correctly.

“A reputation in the UK is not sufficient: customers in the UK are required and that is so whether the business provides products or services,” the judge said in his decision. He added, “Deciding who constitutes a UK customer from the point of view of a services business may involve tricky questions in some cases but as a matter of law in my judgment customers of some kind are required. Thus [the IPO] applied the right test when [it] sought customers (or a business) within this jurisdiction.

According to UK intellectual property laws, if a business can prove that its use of a trademark has established “goodwill”, or essentially a good reputation, in the business associated with that trademark, then goodwill rights are protectable. Much like trademark laws in the U.S., the UK laws will also protect you if another like business “passes off” their products or services as being yours and is making claim that its services are yours or that you are someway connected or endorsing the services. As long as you can demonstrate that you have suffered damages as a result of the infringement, then you can seek damages and injunctions preventing the unauthorized use.

Furthermore, trademark rights are also protected in the UK by registering the trademark at the UK Trade Marks Registry. According to the UK Trade Marks Act of 1994, a trademark may be rejected if it is used in a way that might mislead the public “particularly as to the nature, quality or geographical origin of those goods or services.”

The U.S.-based Plentyofish.com is a free service but asked its visitors to register as members. It argued that Plentymorefish.com, a paid, subscription-based service, was misleading and caused some visitors to register with the subscription service in the belief that they were signing up for Plentofish.com’s free service instead.

Plentyofish argued that the visitor numbers alone indicated that it was entitled to “goodwill” rights to the trademark. It also claimed that visitors to the sight could be considered “customers” since they had been “exposed” to the site’s advertising, a claim sharply rejected by the judge.

October 18, 2011, by Mandour & Associates, APC

Los Angeles – Fashion retailer Urban Outfitter’s line of Navajo Indian branded clothing and accessories has enraged people from the Navajo Nation government, who is alleging trademark infringement. The Navajo Nation is particularly upset with the retailer’s underwear products and a liquor flask that many tribe members consider disrespectful to their native American culture.

For years, runway models have been showcasing Navajo-inspired prints from top clothing designers. The Navajo Nation is taking issue with the clothing chain over its unauthorized use of the Navajo name on its products and marketing campaign. To date, the tribe has registered at least ten trademarks for “Navajo” that cover clothing, footwear, household products, textiles, and online retail sales.

As a result of the alleged infringement, the tribe’s Department of Justice fired off a cease and desist letter to Urban Outfitters in June, demanding that the clothier discontinue use of the Navajo name on its products. Although Navajo Nation has not received a response from the clothing chain, it remains “cautiously optimistic” that it will be able to convince Urban Outfitters to adopt another brand name and trademark.

“When products that have absolutely no connection to the Navajo Nation, its entities, its people, and their products are marketed and retailed under the guise that they are Navajo in origin, the Navajo Nation does not regard this as benign or trivial,” stated tribe attorney, Brian Lewis. He went on to say, “It takes appropriate action to maintain distinctiveness and clarity of valid name association in the market and society.”

Urban Outfitters, which has retail locations across the United States and overseas, claims that it has never been contacted by the Navajo Nation regarding the trademark. The retailer also defended its use of the name and said that it has no plans of altering or removing the Navajo name from its products or marketing. In a statement from company spokesman Ed Looram, he said:

“Like many other fashion brands, we interpret trends and will continue to do so for many years to come. The Native American-inspired trend and specifically the term ‘Navajo’ have been cycling through fashion, fine art and design for the last few years.”

Although the Navajo Nation has not initiated any legal action, one could argue that it has a strong case of trademark infringement. Essentially, the tribe could make the argument that consumers would be confused and believe Urban Outfitters has some association with the native Americans. The Navajos are a proud people, protective of their culture and reputation, and would like companies to be tasteful and respectful when using the Navajo print.

The issue with Urban Outfitters does not mean that the Navajo Nation is not open to working with companies. In 2007, Fermin Navar and his business partner Phil Brader, signed a 75-year licensing agreement with the tribe that allows them to sell skin care products and clothing with the Navajo name in exchange for profit share.

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