Tag: Famous Marks

Stop the Insanity! Sports Trademarks Run Amok

Sports and sports teams have a long history with intellectual property law and, more specifically, trademarks.  Sports teams, colleges, and universities have long trademarked their names and logos, and have routinely and aggressively enforced those rights.  In 1988 Pat Riley, then the head coach of the National Basketball Association’s Los Angeles Lakers, applied for a … Continue Reading

Was Missguided Misguided? Kim Kardashian West Obtains $2.7 Million Judgment in Right of Publicity and Trademark Suit

A federal district court in California has awarded a $2.7-million default judgment to Kim Kardashian West in her lawsuit against a fast fashion online retailer that allegedly used her persona and likeness to sell its clothing, in part by repeatedly tagging her on Instagram and linking to the retailer’s e-commerce site. Kardashian West’s suit is … Continue Reading

What’s Going On? Another Marvin Gaye Lawsuit Tests the Limits of Copyright Protection

Just when you thought it was over, another copyright infringement lawsuit involving a Marvin Gaye song is set for trial. The dust had barely settled on the infamous “Blurred Lines” case when a second suit, this time targeting world-famous pop star Ed Sheeran, took another step closer to trial. Similar to the prior case, the battleground being … Continue Reading

Simon Cowell picks bone with “The Pets Factor” UK trade mark

When TV format creator Mark Duffy struck upon the tongue-in-cheek name “The Pets Factor” for what was (presumably) a talent competition for domestic animals, he might well have smiled at his own ingenuity. Conversely, when Simon Cowell heard about the name (via Mr Duffy’s application to register it as a UK trade mark in classes … Continue Reading

Federal Circuit Reminds Us That Extrinsic Considerations Are Narrowly Construed in Trademark Matters

2018 saw a number of important trademark cases decided across the United States.  Two cases illustrated the similarities between genericness analysis and one of the likelihood of confusion factors considered by the Trademark Trial and Appeal Board (“TTAB”).  Royal Crown Co., Inc. v. The Coca-Cola Co., 892 F.3d 1358 (Fed. Cir. 2018) and Omaha Steaks … Continue Reading

When appealing bears fruit: Pear Technologies v EUIPO – Apple

Are apples different from pears? Or are they both just fruit? Or, as cockney rhyming slang would have it, are they stairs? These are the questions (excepting the last one) that the distinguished judges of the Court of Justice of the European Communities (CJEU) have been gr-apple-ing with in the recent case of Pear Technologies … Continue Reading

Apple Closed Two of Its Stores in Eastern Texas. The Reasoning May Surprise You – How patent laws can affect key business decisions

Apple, the technology giant which runs successful Apple Stores all over the world, announced that it will close its only two stores in eastern Texas by Friday, April 12. Apple, however, did not announce why it was closing those two stores. This is especially intriguing since Apple likely generates millions of dollars in revenue each … Continue Reading

1-800 Contacts Unlawfully Restricted Competitors’ Trademark Use in Search Engine Marketing

The Federal Trade Commission (FTC) recently decided that agreements reached by 1-800 Contacts, Inc. with a number of its competitors to settle claims that the competitors’ online search advertising infringed on 1-800 Contacts’ trademarks unlawfully restricted the competitors’ ability to engage in search engine marketing, to the detriment of both consumers and search engines. The … Continue Reading

Federal Circuit Establishes New Test for Trade-Dress Secondary Meaning

The United States Federal Circuit recently issued a precedential opinion addressing trade dress secondary meaning.  The decision establishes a six-factor test to determine whether trade-dress acquired secondary meaning and clarifies a variety of other, related matters. Converse appealed a final determination of the International Trade Commission (“ITC”) that Converse’s U.S. trademark number 4,398,753 (“the ‘753 … Continue Reading

Nothing beats a good TM LWYR – Nike’s questionable LDNR campaign

A July 2018 decision of the UK Intellectual Property Enterprise Court (IPEC) appears to have put paid to Nike’s recent “Nothing beats a Londoner” ad campaign. The case highlights, with hindsight, a perhaps regrettable commercial/legal decision by the sports giant, whilst also demonstrating the usefulness of the IPEC as a means of speedy and effective … Continue Reading

IP Court restrained to sell and market a generic drug until the patent expiry

On 24 April 2018 the Intellectual Property Court published its Decision in case A41 85807/2016 between Swiss-based Novartis AG and local generic Nativa LLC. The IP Court’s position in this case may result in an extra defense granted for patent holders against unfair practice of registration of generics drugs until patent expiry.… Continue Reading

NCAA Obtains Injunction Over “March Madness” and “Final Four” Trademarks

The U.S. District Court for the Southern District of Indiana sided with the National Collegiate Athletic Association (NCAA) and awarded a permanent injunction against game developer Kizzang Inc. (Kizzang) over a mobile and online game that infringed the NCAA’s trademarks “March Madness” and “Final Four.” Background The NCAA administers inter-collegiate sports across the United States … Continue Reading

Trade Secrets as Part of Your IP Portfolio: The Case of Col. Sanders

Trade secrets, together with patents, trademarks, and copyrights, are one of the four main types of intellectual property.  Unlike the three other types of IP, trade secrets are never made public.  Trademarks and service marks are obtainable only through public use that creates an association between the mark and the origin of specific goods or … Continue Reading

Registration of Mark “THEZARA” for Motel Services Invalidated Based on the Mark “ZARA” for Clothing – A Case Study

Representing our client Inditex S.A. (“Inditex”), owner of the famous fashion brand “ZARA,” Lee International obtained a favorable decision in its invalidation action against the registered mark “THEZARA” for motel and hotel services. Facts Lee International filed an invalidation action against the registered mark “THEZARA” for “motel, hotel,” etc., on behalf of Inditex.  The invalidation … Continue Reading

Success in the battle for Stolichnaya and Moskovskaya

bkp partners Martin Reinisch and Georg Fellner have obtained a favorable judgment by an Austrian Appellate Court for bkp client Spirits International (SPI Group) confirming the latter’s rights in the iconic Stolichnaya and Moskovskaya trademarks in Austria. The favorable judgment has been rendered in a lengthy, complex court proceeding which is the Austrian part of … Continue Reading

Tomorrow Is Yesterday: Today’s Cases Boldly Going Where Our Blogs Have Gone Before

Sometimes blogging topics are hard to come by.  It is often difficult because, as a sage once noted in discussing the search for The Ultimate Computer, one wants to do one’s best, but something like creativity “doesn’t work on an assembly line basis. … You can’t simply say, today I will be brilliant,” insightful, informative … Continue Reading

Korean Patent Court Finds: Use of Outback motel mark unfairly competes with mark for restaurant services

In a suit alleging trademark infringement and unfair competition, the Korean Patent Court concluded that the use of the mark “” in connection with “unmanned lodging services” used for so-called love motels with an image of a naked woman, did not infringe Outback Steakhouse’s trademark.  But it did constitute unfair competition because that use harmed … Continue Reading

“EACH DAY HAS A COLOR, A SMELL…”: Searching For New Trademark Worlds

The search for spices, and the gold that one expected to find nearby (or earn through sale of the spices), in many ways drove the Age of Exploration.  And spices still hold a special place in our economy and in our imagination; in fact, we believe that spices “all hold magic.” Part of that magic … Continue Reading

Picking: A Few IP Collectibles Since My Last Post

There is a popular television show in the United States called American Pickers, which follow the adventures of antique and collectible “pickers” Mike Wolfe and Frank Fritz.  Wolfe and Fritz travel around in a van with the logo Antique Archeology to buy, or “pick,” various items for resale, for clients, or for their own personal … Continue Reading

CAN YOU SLEEP AT NIGHT – YOU NEED TO KNOW ABOUT INJUNCTIONS IN CANADA

The mattress business is a competitive one!  Trade-marks in the mattress business are valuable! Sleep Country Canada Inc. is a major mattress retailer in Canada.  It is best known for its slogan “Why Buy a Mattress Anywhere Else?”.  It owns two Canadian trade-mark registrations for this slogan.  This trade-mark, together with its accompanying musical jingle, … Continue Reading

U.S. Supreme Court Sets the Bar Higher for Obtaining Damages for Design Patent Infringement

Bottom Line:  The Supreme Court’s decision sets the bar higher for design patent holders to recover for infringement and opens the door to apportionment of damages. Parties looking to file for design patents will likely consider claiming their patents more broadly, in order to avoid the specter of reduced damages in the event the design … Continue Reading

Maybe Axanar Could Klingon To Its Fair Use Defense In A Parallel Copyright Universe

On January 3, 2017, in Paramount Pictures Corp. v. Axanar Productions, Inc. et al., a United States District Court held that Axanar could not rely on a fair use defense during the upcoming trial over whether Axanar infringed Paramount’s copyright in the popular Star Trek television and motion picture franchise.  Axanar has an existing twenty-one … Continue Reading

Supreme Court Reverses Apple v. Samsung Design Patent Damages Award

On December 6, the Supreme Court reversed Apple’s $399 million patent infringement verdict against Samsung.  The decision – the first from the Supreme Court to interpret design patent damages since 1886 – arguably raises more questions than it answers. In a series of widely-publicized cases around the globe, Apple and Samsung have been battling over … Continue Reading

“…if you listen very hard…”: Stairway To Heaven Verdict May Have Unblurred Lines In Music Infringement Cases

Among the last few lines of Led Zeppelin’s rock ballad Stairway to Heaven are the lyrics “And if you listen very hard/The tune will come to you at last./When all are one and one is all…”  Spirit guitarist Randy Wolfe brought suit against Led Zeppelin for copyright infringement, apparently thinking that one did not even … Continue Reading
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