Wealth of Ideas Blog

Trademarks and Chocolate

Submitted by General Patent on Sat, 02/21/2015 - 20:25

Trademarks are always fascinating, and we love chocolate, so we had to share with you a trademark-chocolate story. When Hershey filed a lawsuit against LBB Imports, the importer of specialty products from Great Britain, Australia and South Africa, LBB decided to stop importing the brands that bear the “Cadbury” trademark, the trademark that Hershey has exclusive rights to in the U.S.

A New York City store that specializes in British imports, Tea & Sympathy, wrote on its Facebook page that “"Due to legal action by the so-called chocolate maker Hersheys, we can no longer import the real Cadbury chocolate from England.They want us to sell their dreadful Cadbury approximation but we can't in good conscience sell you such awful chocolate when we have made our reputation on selling you the yummy real English stuff."

Our observation is this. The retailer was smart enough to trademark “Tea & Sympathy” which we find to be clever and adorable. 

Trademarks and Noodles

Submitted by General Patent on Sat, 02/21/2015 - 20:23

When Michelin three-star-rated chef Joshua Skenes announced that he was opening a new restaurant called “Fat Noodle”, the news was greeted warmly by noodle aficionados. The news was not greeted warmly, but hotly and contentiously, by Chubby Noodle that filed a trademark infringement lawsuit against Fat Noodle claiming that two restaurants names are “confusingly similar.” The lawsuit went on to claim that Fat Noodle is “dilut[ing]” and “tarnish[ing] the image of the…Chubby Noodle mark.”

Fat Noodle’s counterclaim is that Chubby Noodle is “trying to use our good name and press to enhance their own.”

We wish we had something clever to add, but our noodles are not working today.

Trademarks and Beer

Submitted by General Patent on Sat, 02/21/2015 - 20:19

Time was that you sat at the bar and ordered a beer. The proliferation of over 3,000 new local and specialty breweries over the past few years has created stiff competition to trademark the names of all the brews from all of these breweries.

In 2013, Lagunitas Brewing received a cease-and-desist order from SweetWater Brewing demanding that Lagunitas stop using “420” (the popular code for marijuana) on the labels of several of its beers. SweetWater had been brewing and selling its “420 Extra Pale Ale” since the 1990s, so they laid claim to that branding. Being really mellow guys, the folks at Lagunitas agreed that SweetWater had claim to “420” in its beer brand, and agreed to remove the offending “420” from the Lagunitas’ beer labels.

Rumor has it they burned the unused “420” beer labels

Riders of the Purple Sage Ride Again

Submitted by General Patent on Wed, 01/28/2015 - 02:45

It started with a lawsuit filed by the 60’s rock group The Turtles against Sirius XM, the satellite radio broadcaster, over royalties. Federal copyright law only applies to broadcasted music as of 1972, so The Turtles want to be paid royalties when Sirius XM plays the group’s pre-1972 music. The Turtles won the first round, so more lawsuits have ensued.

The latest are seven lawsuits that were filed against Apple's Beat Electronics, Sony Entertainment, Google, Rdio, Songza, Slacker and Escape Media Group, operator of Grooveshark. The lawsuits were filed by Zenbu Magazine which claims to own sound recordings of New Riders of the Purple Sage. Zenbu also claims to own the sound recordings of The Flying Burrito Brothers and Hot Tuna, but since we never heard of either of these groups, is there really any royalties to be paid?

Next Time, Ask Her to Take Back Her Maiden Name

Submitted by General Patent on Wed, 01/28/2015 - 02:41

ELVH, Inc., the holding company for the rock band Van Halen, had sued Kelly Van Halen, the ex-wife of the group’s drummer, Alex. Ms. Van Halen attempted to register trademarks for her name to use to promote and sell furniture, children’s blankets and bathing suits. ELVH claimed that “Kelly Van Halen” infringed and diluted the “Van Halen” trademark. We will never know what would have happened because the case was settled out of court, but www.kellyvanhalen.com is up.

These Are Two Vain Guys

Submitted by General Patent on Wed, 01/28/2015 - 02:39

Our story goes back to 2010 with the death of Dr. Keith L. Davis who had founded Vein Care Pavilion of the South with Dr. Steven M. Roth, and one of the trademarks of the medical practice is “The Vein Guys.”

In the event of the death of one of the partners, the surviving physician had the first option to purchase the rest of the business within 90 days. The accountant who had worked for the medical practice was engaged to determine the value of the business, but Dr. Davis' widow objected, claiming that the accountant had essentially worked for Dr. Roth, so he was biased. She also claimed that “The Vein Guys” trademark was actually owned by Vein Care Pavilion of the South. It appears the trademark was registered to Dr. Davis, but the trademark filing but had been paid for by the medical practice, Vein Care Pavilion of the South. Compounding all of this is that in the midst of the litigation, the surviving partner, Dr. Roth, died in a plane crash! 

After two appeals, the case is now before the Georgia Supreme Court. This case was tried in state court because it is not about trademark infringement or validity, but over ownership and value of the trademark. 

Let’s Take Ten and Think about This

Submitted by General Patent on Fri, 12/19/2014 - 04:22

Sorry about the headline. We could not help ourselves. In a rare move, a Federal Circuit Court has over-ruled the U.S. Patent and Trademark Office. St. Helena Hospital had applied for the trademark “TAKETEN” and the Trademark Office denied the registration, claiming it was too similar to a current trademark, “Take 10!”

The law permits multiple owners of identical trademarks if the products or services covered by the two identical trademarks would not easily be confused in the minds of consumers. Cadillac the car and Cadillac the dog food is one example of two identical trademarks that are for totally different products. On that basis, the two companies can own and use identical trademarks since consumers would not confuse the two products. 

The three-judge panel ruled that while the two trademarks were similar – not even identical – it was not likely that St. Helena's ten-day residential health improvement program known as "TAKETEN" would be confused with the already registered "Take 10!” which is a video exercise program.

 

 

It Will Not Be Hard to Find Jurors for This Trial!

Submitted by General Patent on Fri, 12/19/2014 - 04:17

Male jurors, at least. Victoria's Secret is suing CafePress, an online seller of consumer-designed products, claiming infringement of Victoria’s Secret’s trademarks. In the lawsuit, Victoria’s Secrets claims that CafePress is selling women's apparel that are “knockoffs and/or counterfeit versions” of Victoria’s Secret products. 

We suspect that the attorneys for both sides – probably all men – will require that one set of models wear the original Victoria’s Secret apparel, and a second set of models wear the CafePress products, as that is the only way that the jury – very likely to also be all male – can make a fair decision.

Nike Sues Three Former Designers Who Jumped Ship to Adidas

Submitted by General Patent on Fri, 12/19/2014 - 04:15

Nike claims that three of its former star shoe designers stole a "treasure trove" of trade secrets when they left earlier this year to work for Nike’s rival, Adidas. Nike has filed a lawsuit in Oregon claiming that three of its former designers – Denis Dekovic, Marc Dolce and Mark Miner – conspired to set up their own design studio, then convinced Adidas to engage them with the promise to provide Adidas with insider Nike design details and product plans. Pretty sneaky. Sorry, we could not help ourselves.

Getting serious again, the three designers were all bound by non-compete agreements, but such agreements are difficult to enforce. 

An Unexpected Outcome of Legalized Pot - Part I

Submitted by General Patent on Tue, 11/25/2014 - 00:42

MGM just filed a trademark infringement lawsuit against M Life Inc., a company with an application to operate a marijuana dispensary in Las Vegas under the name M’Life Wellness. “M life” is the name of the MGM’s frequent gambler/customer rewards program that is used at 15 of the company’s properties. In the lawsuit, MGM claims trademark dilution, unfair competition and cybersquatting in the defendant’s use of MGM trademark.

We hope M’Life Wellness learns something from this experience: Get a frequent toker/customer rewards program its own because we doubt too many of your clients will be able to remember what they purchased and when.

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