Michael Atkins recently published an interesting post on his “Seattle Trademark Lawyer” blog entitled “Ninth Circuit Changes Dilution Standard”. Unlike trademark infringement, which requires a likelihood of confusion between two marks, trademark dilution
only applies to famous marks. If a mark lessens the capacity of a famous mark to identify and distinguish good and services, it may be diluting the famous mark. In a case involving the stitch designs on the pockets of Levi Strauss and Abercrombie & Fitch jeans, the Ninth Circuit reversed the district court’s decision, stating that the two marks no longer need to be “identical or nearly identical”. Atkins posted side-by-side drawings of the two stitch designs. Take a look and draw your own conclusions.
What can happen when an international corporation goes after a local disc jockey at a college radio station in Amarillo, Texas for trademark infringement? If the DJ is internet savvy and makes enough noise about it, the corporation may back down.
In the summer of 2010, Brian Basher, music director atKACV FM 90, Amarillo College’s radio station, began hosting a 2-hour weekly syndicated radio program calledHard Rock Nights that airs on over 20 affiliates and in three countries. In order to promote this show, Basher registered the domain name www.HardRockNights.com. In November of 2010, the Business Affairs Department of Hard Rock Café International (HRCI), owner of the cafés, hotels and casinos that bear the Hard Rock name, sent Basher a cease and desist notice by email. The notice, cryptically signed by “/ipenforcement/”, demanded that Basher transfer the domain name, take down all content, and cease and desist from registering any similar domain names or using any terms that are confusingly similar to HRI’s famous trademark.
Undeterred, Basher began using Facebook, Twitter, blogs and online press releases to publicize his predicament. Fans and friends followed suit by drumming up support for the beleaguered DJ. About a day after receiving the cease and desist notice, Basher received a second letter, this time from the Senior Director of Business Affairs at HRCI, stating that his intended use of www.HardRockNights.com “would amount to non-infringing use of the term hard rock.” The second notice also revealed that HCRI “automatically issued, via its monitoring service provider, its cease and desist notice.” Although the second notice thanked Basher for the “additional information” he provided as to how he intended to usewww.HardRockNights.com, Basher insists that he provided no such information to HRCI. It would appear that HRCI withdrew its notice in response to the negative publicity received in social media.
Automated software may be a cost effective way to initially identify potential infringers, but in this case, spitting out a cease and desist notice without first reviewing the evidence resulted in unwanted publicity and an avoidable retraction.
Intellectual property (IP) is a valuable asset, not only for the producers and creator of this intangible property, but also for the overall economy that benefits from the innovation and creativity this property represents. However, the value of intellectual property is greatly reduced when
unauthorized users are allowed to exploit this property through counterfeiting, piracy and other illegal activities. Enforcing IP rights in a global economy requires a coordinated effort among a variety of governmental agencies. The federal government recently announced a plan to improve those efforts.
The 2010 Joint Strategic Plan on Intellectual Property Enforcement (JSPIPE), a 65-page document, was issued in June 2010 by Office of the Intellectual Property Enforcement Coordinator (IPEC). The JSPIPE coordinates the efforts of eight government agencies: the Departments of Agriculture, Commerce, Homeland Security, Justice and State; as well as the Food and Drug Administration, United States Trade Representative and the Copyright Office. A total of 33 Enforcement Strategy Action items are organized into six categories: (1) Leading By Example; (2) Increasing Transparency; (3) Ensuring Efficiency and Coordination; (4) Enforcing Our Rights internationally; (5) Security Our Supply Chain; and (6) Building a Data-Driven Government.
Click here to read the entire document.
Trademarks create an association in the minds of consumers between specific goods and the source of those goods. Because of this, it’s important for trademark owners to police their marks for misuse by competitors who would profit from the goodwill created by the owner. A common way of enforcing one’s
trademark rights is through the cease and desist letter. But some uses, such as parody, may be a defense to infringement and actually decrease the likelihood of confusion. When the trademark owner ignores this difference and proceeds with a cease and desist letter, the result can be both humorous and embarrassing.
Such was the case with a recent dispute between the National Pork Board and Geeknet, Inc., an online store specializing in novelty items. On April 1, 2010, Geeknet began offering “Radiant Farms Unicorn Meat” for sales on its website www.thinkgeek.com, using the slogan, “Unicorn – the new white meat.” A little over a month later, ThinkGeek received a 12-page cease and desist letter on behalf of the National Pork Board, owner of the internationally registered trademark “The Other White Meat”. In a tongue-in-cheek response in keeping with the April Fool’s Day spoof, Scott Kauffman, President and CEO of Geeknet, issued a public apology to the National Pork Board, stating, “It was never our intention to cause a national crisis and misguide American citizens regarding the differences between the pig and the unicorn. In fact, ThinkGeek’s canned unicorn meat is sparkly, a bit red, and not approved by any government entity.”
According to U.S. Trademark Manual of Examining Procedure (TMEP), parody per se is not a defense to a claim of likelihood of confusion, but there are confusing and non-confusing parodies. A true parody actually decreases the likelihood of confusion by creating a distinction in the consumer’s mind between the actual product and the joke. Unlike a parody mark used on the same goods sold in the same channels of trade (see our earlier blog post, Trademarks & Parodies: The North Face versus The South Butt) the fact that unicorns are mythical creatures makes it less likely that anyone would confuse ThinkGeek’s non-edible novelty item with the edible meat promoted by the National Pork Board.
Parody marks can often be used as an effective way to capitalize on the goodwill in someone else’s trademark. But like the famous quote about cigars attributed to Sigmund Freud, sometimes a parody is just a parody.
Liz Claiborne, Inc. learned a costly lesson recently: when going after a smaller company for trademark infringement, it’s not the “lucky” party that wins, but the one with the facts and the law on its side.
In July 2005, Liz Claiborne and its subsidiary Lucky Brands Dungarees, Inc. (“Claiborne”) sued a
smaller company, Marcel Fashion Group, Inc. (“Marcel”) for trademark infringement, trademark dilution and unfair competition surrounding Marcel’s use of the trademark GET LUCKY, which Claiborne alleged infringed upon a number of federally registered trademarks owned by Claiborne and its subsidiary that contained the word“Lucky”.
Marcel countered in September 2005, claiming that by continously using the GET LUCKY mark since 1985, it, and not Claiborne, was the senior user of the mark. Marcel also filed six counterclaims against Claiborne, to include breach of a May 2003 settlement agreement. After nearly five years of litigation, the court awarded nothing to Claiborne and $20,000 in compensatory damages to Marcel. And in an unusual ruling in trademark infringement cases, the court ordered Claiborne, the plaintiff, to pay an additional $280,000 in punitive damages to Marcel.
Trademark litigation can be an effective way to enjoin other companies from profiting off the good will that a trademark owner has built up in a mark. But to succeed, there has to be more than mere “luck” on the plaintiff’s side.