Trademarks: Likelihood of Confusion and Dilution

Trademarks: Likelihood of Confusion and Dilution

  It’s All About the Frap Coffee giant Starbucks takes protecting its trademark Frappuccino seriously. Starbucks owns the trademark “FRAPPUCCINO” in the United States. For those who are not familiar with a Starbucks Frappuccino, it is a line of frozen coffee beverages that is blended with ice and other sweet ingredients and usually topped with…

Battle of the Mice: Disney vs. Deadmau5

Battle of the Mice: Disney vs. Deadmau5

I suspect that most of you are very familiar with Disney and its signature spokesperson, Mickey Mouse. There are probably fewer of you that are familiar with Deadmau5 (pronounced “dead mouse,” real name Joel Zimmerman). Deadmau5 is a music producer, performer and DJ. He often wears a mouse head while performing. Deadmau5 has used this…

Trademark Unfair Competition: “Passing Off”

Trademark Unfair Competition: “Passing Off”

Outside the trademark arena, the idea of unfair competition exists in common law and statutes to compensate businesses that have suffered an injury through deceptive or wrongful business practices. In a trademark situation an injured party can bring an unfair competition claim under § 43(a) of the Lanham Act. Section 43(a) provides that: Any person…

A Trademark Dispute Over Light Sabers and Lagers

A Trademark Dispute Over Light Sabers and Lagers

The Disney-owned production company, Lucasfilm Ltd., filed an opposition to Walton Street Brewing Corp.’s application to register the trademark for its beer aptly named “Empire Strikes Bock.” Walton Street Brewery describes its “Empire Strikes Bock” lager as a “spring lager…brewed with German malt & hops and then lagered for six weeks. Extremely clean and refreshing.”…

Intellectual Property: The Lanham Act

Intellectual Property: The Lanham Act

Landmark Lanham Decisions from the 2013-2014 Term of the United States Supreme Court Intellectual property cases have become a hot topic the United States Supreme Court. Ten of the sixty-nine cases that the United States Supreme Court heard in 2013 and 2014 dealt with intellectual property issues. Two of those decisions dealt directly with the…

Trademark Case Close to Home: Blue Door v. Bluzy’s Roadside Bar

Trademark Case Close to Home: Blue Door v. Bluzy’s Roadside Bar

The Blaine restaurant, Bluzy’s Roadside Bar, recently reach settlement with Rich Pour Enterprises, LLC, owner of The Blue Door Pub to change its name to “The Roadside.” Bluzy’s original opened in the Fall of 2013 with its original name of “Blucy’s Roadside Bar.” When Rich Pour objected claiming it was too similar to its hamburger…

Quinta Real versus La Quinta: Likelihood of Confusion?

Quinta Real versus La Quinta: Likelihood of Confusion?

La Quinta operates approximately 800 hotels in the United States and most are under franchise agreements. Quinta Real is considered a “luxury” hotel chain in Mexico and has established 8 hotels in Mexico. Quinta Real has published two letters of intent, one in 1994 and one in 2007, to expand into the United States. There…

Copyrights: Exclusive Right to Reproduce the Work

Copyrights: Exclusive Right to Reproduce the Work

Rights under the Copyright Act Generally Under the Copyright Act of 1976 there are exclusive rights provided to the owner of a copyright. The owner of the copyright has the exclusive right to the following: Right to reproduce the copyrighted work in copies or phonorecords; To prepare derivative works based upon the copyrighted work; To…

Unincorporated Associations Can Own and Enforce Trademarks

Unincorporated Associations Can Own and Enforce Trademarks

The Story of Southern California Darts Association On August 11, 2014, the Court of Appeals for the Ninth Circuit, in which the states of Arizona, California, Nevada, Oregon, Idaho Washington and Montana are subject, held that unincorporated associations have the legal capacity and right to own trademarks and to sue infringers to enforce them. The…

What is Likelihood of Confusion in Trademark Infringement?

What is Likelihood of Confusion in Trademark Infringement?

In trademark law, “likelihood of confusion” is the primary legal standard for trademark infringement. A recent decision from the 9th Circuit Court of Appeals nicely articulates the black letter law behind the “likelihood of confusion” standard: To show trademark infringement, a plaintiff must establish ownership of a trademark and a likelihood of consumer confusion. AMF,…

Copyright Fair Use

Copyright Fair Use

After a plaintiff has been able to prove copyright infringement a defendant can allege a number of defenses, including fair use. A defense of fair use is not alleging that an infringement did not occur, but rather that the infringement is excusable. The defense of fair use allows courts some flexibility to assess matters on…

Copyright Law Generally

Copyright Law Generally

Copyright law provides authors rights for their works. The authority that gives Congress authors exclusive rights to their work comes from the Constitution. Article I, Section 8, Clause 8, known as the “copyright clause” empowers the United States Congress to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors…

What is a Trade Secret?

What is a Trade Secret?

According to the World Intellectual Property Organization, a trade secret is “any confidential business information which provides an enterprise a competitive edge…[and] can encompass manufacturing or industrial secrets in commercial secrets.” Minnesota has adopted the Uniform Trade Secrets Act and has codified it as Minnesota Statutes Chapter 325C. Under the Minnesota Uniform Trade Secrets Act…

International Trademark Treaties

International Trademark Treaties

Paris Convention The Paris Convention applies to patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications, the repression of unfair competition and was signed in Paris, France on March 20, 1883. In essence, it ensures that each member nation tax citizens of the other member nations against unfair competition. The Paris Convention…

Remedies for Trademark Infringement

Remedies for Trademark Infringement

Remedies for trademark infringement can include a number of things including lost profits, damages and even attorneys’ fees. Injunctive Relief Injunctions are usually seen as a standard remedy in trademark infringement case and are regularly granted. A court’s injunctive relief could include an injunction against use of the mark, field of use restrictions (the defendant…

Defenses to a Trademark Infringement Action: The Fair Use Defense

Defenses to a Trademark Infringement Action: The Fair Use Defense

There can be instances where one can use the trademark of another and that use will be classified as “fair use.” Usually, marks have two meanings, a trademark meaning and an independent or surname descriptive meaning. It is important to note that under trademark law only the trademark meaning is given protection. In other words…

Scandalous or Immoral, Disparaging, or Deceptive Marks: Can They Be Registered?

Scandalous or Immoral, Disparaging, or Deceptive Marks: Can They Be Registered?

Scandalous or Immoral Every once in a while the U. S. Patent and Trademark Office is faced with an application that could potentially be deemed “scandalous or immoral.” Denial of marks that are scandalous comes from Section 2(a) of the Lanham Act which states, No trademark by which the goods of applicant may be distinguished…

Trademark Basics

Trademark Basics

What is a trademark? Under the Lanham Act, the term “trademark” includes, [A]ny word, name, symbol, or device, or any combination thereof— used by a person, or which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish…

When is Trademark and Copyright Use Considered Fair Use?

When is Trademark and Copyright Use Considered Fair Use?

The notion of fair use is something that every person or party with a trademark or copyright should be aware of. While having a trademark and a copyright exists to provide protection so the person who owns that trademark or copyright can protect it, there are instances where a third party may use the trademark…

Trademark Infringement in the Age of the Internet

Trademark Infringement in the Age of the Internet

Introduction to Trademarks and the Internet Trademark rights are effectively regional in nature. That is, one can only assert his or her rights against another using a same or similar trademark (or “mark”) likely to cause consumer confusion. Traditionally, consumer confusion resulted from mor e than one company using similar marks within the same geographical…

Obtaining & Selling a Trademark | Trademarks: How To Obtain & Sell

Obtaining & Selling a Trademark | Trademarks: How To Obtain & Sell

A person obtains a trademark by being the first to use it in commerce on a good or service. It must be something that may be validly trademarked. Descriptive marks and generic marks generally may not be trademarked. Obtaining a trademark gives a person exclusive use of that mark. A trademark need not be registered,…

Why You Need a Solid Agreement with Your Partners: STP’s Sad Tale

Why You Need a Solid Agreement with Your Partners: STP’s Sad Tale

Why You Need a Solid Written Agreement with Your Partners: The Unfortunate Tale of Stone Temple Pilots You Control Intellectual Property Your Company Creates by a Written Partnership Agreement The current legal battle among members of the Stone Temple Pilots may evolve into an excellent example of how to avoid common mistakes that business owners…