Trademark Infringement

  • No Damages, Big Problem: Infringement Claims Lacking Cognizable Injury

    No Damages, Big Problem: Infringement Claims Lacking Cognizable Injury

    Anthony Cartee

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    No Damages, No Case? The Importance of Cognizable Damages in Trademark Infringement Claims In a highly competitive marketplace, established companies sometimes use a variety of means to suppress emerging companies and its branding that may or may not threaten their own market share. Often, lawsuits for trademark infringement claims end upon enjoining the defendant infringer. However, companies always press for monetary damages as well, but a prevailing plaintiff is not automatically entitled to such an award. See 15 U.S.C. § 1117(a). As an accused infringer, it is important to be aware of options that may be useful in defending yourself… Read More

  • When Unprotected Elements In Trademarks And Copyrights Get You In Hot Water

    When Unprotected Elements In Trademarks And Copyrights Get You In Hot Water

    Anthony Cartee

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    Trademark and Copyright Issues to Consider With Sales of Athletic Goods and Apparel When can a generic design rise to an infringement of intellectual property rights? A common and growing occurrence comes when one takes an attribute of a famous athlete (like a number), puts it with that athlete’s team color scheme, and the next thing you know, someone is claiming a likelihood of confusion. Such apparel that strive to simply use generic designs, but combine well-known elements that might implicate the rights of a famous athlete or clubs best beware that they are touching on issues that go into… Read More

  • Amazon Faces Trademark Infringement Claim

    Amazon Faces Trademark Infringement Claim

    Anthony Cartee

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    Amazon Faces Trademark Infringement Claim Amazon Faces Trademark Infringement Claim – The U.S. Court of Appeals for the Ninth Circuit found that internet-based retail giant Amazon.com could be misleading consumers by displaying a watchmaker’s competing products when users search for its watches (read the full opinion here). Multi Time Machine Inc. (“MTM”), a luxury, military style watchmaker, brought a trademark infringement claim asserting Amazon violated its trademarks by displaying a rival brand’s products when customers searched for “MTM” watches. This case, which came on appeal after Amazon won a motion for summary judgment in the District Court, is unique in that… Read More

  • Trademarking Food – Pizzeria Makes Case

    Trademarking Food – Pizzeria Makes Case

    Anthony Cartee

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    Trademarking Food – Pizzeria Makes Case Pizzeria Makes its Case for Trademarking Food – A federal court in Texas ruled that flavors of a pizza chain’s food and its plating techniques lacked trademark and trade dress protection. The pizza chain, New York Pizzeria, Inc. (NYPI) alleged that Ryandir Syal, a restaurateur, along with other defendants, obtained NYPI’s trade secrets and additional information through a series of other illegal acts. Syal then used the information for a business in direct competition with NYPI, while allegedly infringing on NYPI’s intellectual property. The court’s decision came after Syal made a motion to dismiss… Read More

  • Contributory Cybersquatting

    Contributory Cybersquatting

    Anthony Cartee

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    Contributory Cybersquatting Contributory Cybersquatting – Does the Anticybersquatting Consumer Protection Act (ACPA) provide a basis of liability for a domain name registration service if one of its registrants is guilty of cybersquatting?  The United States Court of Appeals for the Ninth Circuit upheld the district court’s opinion that the ACPA does not provide for so-called contributory cybersquatting as a legal basis for liability. The dispute centered on a company known as Petroliam Nasional Berhad (“Petronas,”) a Malaysian petroleum company which owns the trademark “Petronas.”  Petroliam sued major internet domain name registration service provider GoDaddy.com for contributory cybersquatting because one of GoDaddy’s users… Read More

  • Trade Dress – Whiskey Bottle Showdown

    Trade Dress – Whiskey Bottle Showdown

    Anthony Cartee

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    Trade Dress – Whiskey Bottle Showdown David Versus Goliath in Whiskey Bottle Showdown Trade Dress Showdown – One of the iconic, uniquely American products out there is Tennessee Whiskey.  With rugged, outlaw roots stemming from the days of moonshining and prohibition but now accepted the world over as a highly sought after beverage, even the term Tennessee Whiskey tends to evoke a certain image, perhaps even a certain nostalgia. Jack Daniel’s Trade Dress Certainly these mental images, or customer associations in trademark-speak, can give rise to legal problems.  One such case was recently filed by Jack Daniel’s, maker of the… Read More

  • Nominative Fair Use – Swarovski Aktiengesellschaft v. Building No. 19

    Nominative Fair Use – Swarovski Aktiengesellschaft v. Building No. 19

    Anthony Cartee

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    Swarovski Aktiengesellschaft v. Building No. 19 – Nominative Fair Use Nominative Fair Use – This case highlighted the fact that trademark law is constantly evolving – the major issue was so-called “nominative” use of a trademark, i.e., use of a trademark to refer to the trademark holder’s own goods in an advertisement by a seller not affiliated with the trademark holder.  The United States Court of Appeals for the First Circuit recently decided the very interesting case of Swarovski Aktiengesellschaft v. Building No. 19.  As the First Circuit noted, different circuits of the United States have fashioned different rules for dealing with… Read More

  • Trade Dress – Does it Have to Have Secondary Meaning?

    Trade Dress – Does it Have to Have Secondary Meaning?

    Anthony Cartee

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    Trade Dress – Does it Have to Have Secondary Meaning? In a previous post we’ve touched on the idea of trade dress – the packaging of a product, and its “look and feel.”  The configuration of the product itself, such as the shape of a bottle, may also be considered trade dress.  Trade dress is protectable under the Lanham Act as something of value that may indicate the source or origin of a product.  Previously we mentioned two additional requirements: the trade dress cannot be functional, and it must be distinctive.  For example the color and shape of a bottle of Tide… Read More

  • Titles of Artistic Works – Implications of Dastar

    Titles of Artistic Works – Implications of Dastar

    Anthony Cartee

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    Titles of Artistic Works – Implications of Dastar Artistic Works – The United States Court of Appeals for the 7th Circuit recently decided the case of Eastland Music Group v. Lionsgate Entertainment.  This action for trademark infringement, and the court’s subsequent analysis helped settle an issue long weighed by courts and commentators – to what extent may the title of an artistic work infringe the trademark of another?  The case also developed the implications of the famous (or infamous) case of Dastar Corp. v. Twentieth Century Fox, one of the most important trademark decisions of the 21st century to date. Background of… Read More