Trademark Litigation

  • 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

  • Nominative Fair Use: One Defense Against a Brand Bully

    Nominative Fair Use: One Defense Against a Brand Bully

    Anthony Cartee

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    Understanding Brand Bullies On top of today’s extremely competitive market, small businesses may be also dealing with a “brand bully.” Also known as a trademark bully, a brand bully is a company that resorts to litigation and uses its trademark rights to harass and intimidate another business without a sound legal basis. These companies often file oppositions against marks or the use of their alleged mark that would not directly or substantially damage them. The brand bullies primarily rely on their “fame” or “strength” of their marks, and the smaller business’s lack of resources for prolonged litigation. Typically, these brand… 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

  • Oprah Wins Round Two Trademark Infringement Case

    Oprah Wins Round Two Trademark Infringement Case

    Anthony Cartee

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    Oprah Wins Round Two – Trademark Infringement Case Oprah Winfrey claimed a second victory against motivational speaker Simone Kelly-Brown in a trademark battle over the phrase “Own Your Power.” Kelly-Brown and her company, Own Your Power Communications, claimed Winfrey, and other named Defendants infringed on her trademark under both federal and state laws, and included a slew of other related claims. (Read the opinion here) Oprah Winfrey first won this case on a motion to dismiss, but the U.S. Court of Appeals for the Second Circuit vacated the court’s order with respect to Plaintiffs’ trademark infringement, false designation of origin,… 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

  • What Would Jesus Do – TTAB Decides Trademark Battle

    What Would Jesus Do – TTAB Decides Trademark Battle

    Anthony Cartee

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    What Would Jesus Do – TTAB Decides Trademark Battle What Would Jesus Do – After a six-year legal battle, Tyler Perry has officially won the trademark rights to “What Would Jesus Do.” Kimberly Kearney, a reality TV star, originally registered the mark in 2007 intending to use it for a reality show of her own. Months later, Perry registered the same phrase, and later moved to have Kearney’s rights to it canceled. So what went wrong for Kearney? Ultimately, the Trademark Trial and Appeal Board (TTAB) sided with Perry’s contentions that Kearney had abandoned the mark. See the decision.  In… 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

  • 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