Hard Rock Café chain faces Las Vegas trademark lawsuit

By: Steve Green
Source: http://www.vegasinc.com

England’s Cavern Club, known as the birthplace of the Beatles, hit the international Hard Rock chain with a lawsuit Sunday in Las Vegas alleging trademark infringement.

The suit, filed in U.S. District Court, complained Florida-based Hard Rock Café International has recently opened a small events room called “The Cavern Club” in one of its Las Vegas locations.

Hard Rock Café International owns restaurants, clubs, casinos and hotels around the world and also licenses that name.

The Cavern Club in Liverpool said in the lawsuit that it is a "legendary nightclub" that opened in 1957. In 1961 the Beatles made their first appearance there and would go on to perform there nearly 300 times, the suit says.

It says the Cavern Club has also hosted the Rolling Stones, the Yardbirds, the Kinks, Elton John and The Who.

The lawsuit indicates the Cavern Club and the international Hard Rock company have butted heads before over the Cavern Club trademark.

The Cavern Club owns the trademark rights to that name in the United Kingdom, the 25 European Community nations, Australia, Hong Kong, Brazil and Canada, the lawsuit says.

But Hard Rock Café International has a U.S. trademark for the Cavern Club name and Sunday’s lawsuit sought to overturn a Sept. 29 decision upholding its U.S. rights to the mark.

That decision was made by the U.S. Trademark Trial and Appeal Board, which dismissed the Cavern Club’s challenge dating to 2005 to that trademark registration.

Besides the Las Vegas location using the Cavern Club name, Hard Rock has a club in Boston that has also used the Cavern Club name for a special events room and performance space, the lawsuit says.

The suit calls the U.S. Trademark Trial and Appeal Board decision rejecting the Cavern Club’s challenge of the Hard Rock-owned trademark “erroneous” and says Hard Rock’s use of the name “is likely to cause and has caused confusion, mistake or deception” as to whether the Hard Rock-owned venues are affiliated with the U.K.’s Cavern Club.

Besides alleging trademark infringement, Sunday’s lawsuit alleges violations of Nevada’s deceptive business practices act and alleges common law unfair competition.

Hard Rock Cafe International, which is owned by Florida’s Seminole Indian tribe, has two cafes in Las Vegas. That chain also has its origins in London, opening its first cafe there in 1971.

Hard Rock Cafe International does not own the Hard Rock hotel-casino in Las Vegas and remains tied up in separate trademark litigation with the hotel-casino.

A request for comment on the lawsuit was placed with Hard Rock.

Sunday's suit was filed by attorneys Paul Rapp in Housatonic, Mass.; and Mark Borghese in Las Vegas.


Source: http://www.vegasinc.com/news/2011/nov/27/hard-rock-caf-chain-faces-las-vegas-trademark-laws/

Las Vegas gay nightclub sues competitor over trademark infringement

By: CRISTINA SILVA
Source: http://www.therepublic.com
LAS VEGAS — Several gay Las Vegas nightclubs are in a trademark battle over a website domain.

Manhattan West LLC filed a lawsuit Wednesday in federal court against the companies behind the popular Krave nightclub on the Las Vegas Strip. The lawsuit against Phantom Entertainment LLC and Krave Entertainment LLC alleges that those companies registered the website domain name piranhalv.com last year. The website redirects users to the Krave website.

Manhattan West owns the Piranha Night Club and 8 1/2 Ultra Lounge off the Las Vegas Strip. Its website is piranhavegas.com.

The lawsuit alleges that the Krave promoters are trying to steal Manhattan West's customers or suggest that the Piranha club is closed. Manhattan West alleges that it is suffering financially as a result because a large portion of its revenue depends on Internet marketing to new and current customers.

Phantom has been involved in the Krave nightclub since last year, when it purchased all of Krave Entertainment's assets as Krave was going through bankruptcy proceedings. Roughly two months later, Phantom registered the pranhalv.com domain name in December.

"Defendants' actions have disrupted or are intended to disrupt Plaintiff's business by, among other things, diverting web users away from Plaintiff's website and from their clubs to the Defendants' website and club," the lawsuit reads.

Manhattan West is demanding monetary, exemplary or punitive damages and attorneys' fees. However, its lawyers estimate that "it would be impossible to determine the potential monetary damages" if Krave continues to maintain the website.

The domain name directed visitors Friday to the Krave nightclub website, which promoted upcoming events and promotions such as "dress in drag & drink free" and "live hair shows."


Source: http://www.therepublic.com/view/story/03f118b61f7744a2b192de3389229637/NV--Nightclub-Dispute/

Skullcandy files lawsuit

By: Jeff DiNunzio
Source: http://espn.go.com

On Monday, Nov. 14, the Park City-based headphone, accessories, and clothing manufacturer Skullcandy filed a complaint against Skelanimals -- a music-related accessories and apparel brand -- in the Utah District of federal court in Salt Lake City for trademark infringement.
The suit claims that consumers will be confused by the use -- perhaps even deceptively -- of Skelanimals' similar style skeleton logos. The complaint alleges that the use of the logos will damage Skullcandy's value. According to its website, Skelanimals was copyrighted in 2008 and licensed by Art Impressions Media Group -- an agency in Calabasas, Calif., that creates what it calls "lifestyle brands." The Skelanimals logos are based on various transparent animal designs, making their skeletons visible on dogs, birds, spiders, and other animations. The logos are applied to an array of items, such as cell phones, computers, handbags, and hats.
Skullcandy, by comparison, was formed in 2003 and has developed a sizeable market in the action sports industry, collaborating on headphones and other products with athletes such as two-time world surfing champion Mick Fanning and X Games and Dew Tour skater Pierre Luc Gagnon, as well as several NBA players including Derrick Rose and Kevin Durant. Skullcandy claims it "reflects the collision of the music, fashion and action sports lifestyles" -- and that its distinctive logo symbolizes that.
A representative for Skullcandy declined to comment to ESPN, except to note that the legal department said the complaint "has no legal effect until it has been served, which it has not." However, the Salt Lake Tribune quoted Tom Burton of Skullcandy's legal counsel, saying, "We have registered trademarks on that skull across the world, particularly in the headphone category. We are recognized globally for that skull ... we have to protect it." (The rep said that Burton was simply paraphrased.)
A request for comment by Skelanimals went unanswered, and no one was made available to address the suit during a phone call to Art Impressions.

Source: http://espn.go.com/action/story/_/id/7266286/skullcandy-files-lawsuit-brand-trademark-infringement

Georgia Lottery prevails in trademark case

By: Dave Williams, Staff Writer
Source: http://www.bizjournals.com

The Georgia Supreme Court Monday narrowly ruled in favor of the Georgia Lottery Corp.    in a trademark infringement case.

In a 4-3 decision, the justices declared that, as a creation of state government, the lottery is entitled to “sovereign immunity” from lawsuits.

In addition, the court ruled that the plaintiffs had not made sufficient use of their trademark on a game called “MONEYBAG$” to make a claim against the lottery for running a game of the same name.

The case stems from 1995, when George Kyle registered a trademark for a game he created consisting of a velvet pouch contained wooden tiles.

However, his efforts to market the game fell flat, and he sold fewer than 50 during the next decade.

Meanwhile, the Georgia Lottery began running a scratch-off game called “MONEY BAGS” after the company that creates games for state lotteries – Scientific Games International Inc. ­– received permission from Kyle for one-time use of the trademark.

After the lottery ran the game twice, in 2005 and 2007, Kyle and business partner Frank Mankovitch sued for trademark infringement.

The Supreme Court’s ruling upheld a previous decision by the state Court of Appeals.

Because the Georgia Lottery Corp. is accountable to the General Assembly and the public through audits and reports, it is an “instrumentality” of the state and therefore, entitled to sovereign immunity, Justice Harold Melton wrote for the majority.

“The purpose, function and management of [the lottery] are indelibly intertwined with the state,” Melton wrote. ...

Source: http://www.bizjournals.com/atlanta/news/2011/11/21/georgia-lottery-prevails-in-trademark.html

Balancing Competition and Trademark Infringement

By: Jusist Legal News & Research
Source: http://jurist.org

Fashion items generally do not have strong protection under trademark law. Rather, the law affords certain "conceivably separable" elements of an item protection under copyright or patent law. For example, a distinctive lace pattern could be copyrighted or a unique design element may fall under the purview of patent law. However, trademark law can be used to protect product packaging. Tiffany's trademark-blue, the Burberry check or the Gucci stripes are all examples of trademarked packaging. Even though trademark rights are limited for fashion items, they do present their holders with a strong legal tool that protects their goods from imitators.

Trademark law ensures that consumers can identify a good's source. In order to qualify for registration, a mark must be distinctive and used in commerce. Under the Trademark Technical and Conforming Amendment Act of 2010, nearly anything capable of carrying meaning can qualify as a symbol or device, and thus as a mark. Marks are classified along a continuum as either generic, descriptive, suggestive, arbitrary or fanciful. Generic marks are the only class of marks not protected under trademark law. The red outsoles of the Louboutin shoes qualify as a descriptive mark, as descriptive marks may include shapes, sounds, smells and even colors. Descriptive marks are protectable, but only with proof of secondary meaning. The burden is on the owner of the mark to show that overtime consumers have come to associate a particular color with a particular brand, causing the color to identify the source of the product.

A product feature cannot be registered if the feature is functional. In Qualitex v. Jacobson, the US Supreme Court held that a product feature qualifies as functional if it is essential to the use or purpose of the article or if it impacts the cost or quality of the article. Prohibiting the trademark of functional product features encourages competition by keeping producers from controlling a useful product feature. The Court in Qualitex explained that if functional product features were trademarked, than competitors would be put at a significant non-reputational disadvantage.

The theory of aesthetic functionality states that consumers desire a specific feature that is not part of the use or purpose of the product itself. Aesthetic functionality was at issue in Jay Franco & Sons v. Franek, when the US Court of Appeals for the Seventh Circuit cancelled a federal trademark registration that claimed the circular beach towel. The court held that, "[g]ranting a producer the exclusive use of a basic element [such as color] impoverishes other designers' palettes." The court explained the more basic and general the element "the more likely it is that restricting its use will significantly impair competition."

The US Court of Appeals for the Second Circuit has adopted its own aesthetic functionality test. Under Wallace International Silversmiths v. Godinger Silver Art Co., aesthetic functionality hinges on whether "trademark protection would significantly hinder competition by limiting the range of adequate alternative designs, the aesthetic functionality doctrine denies such protection." The Second Circuit also eliminated a per se rule in Villeroy & Boch Keramische Werke v. THC Systems, which qualified china patterns as aesthetically functional.

Recently, Yves Saint Laurent (YSL) began selling a line of monochromatic shoes, including four styles of an all red shoe with a matching red bottom. As a result, Christian Louboutin filed suit against YSL for trademark infringement, false designation of origin and dilution. YSL counter-claimed for cancellation of Louboutin's federally registered trademark for "lacquered red sole on footwear." Louboutin moved for a preliminary injunction, but was denied by Judge Victor Marrero of the US District Court for the Southern District of New York. He noted that the court would likely find Louboutin's trademark not protectable and subject to cancellation. He held that, "the Court cannot conceive ... recognition of a trademark for the use of a single color for fashion items." The crux in Louboutin v. Yves Saint Laurent is whether or not Louboutin's lacquered red sole is a functional product feature. Judge Marrero opined that because in the fashion industry color serves ornamental and aesthetic purposes, which are vital to competition, it is unlikely that Louboutin will be able to prove that its red outsole is entitled to trademark protection.

It seems unlikely Louboutin will prevail on appeal, so long as no error in the application of law is found. The court will likely cancel Louboutin's broad registration because it poses significant trademark and policy issues. Furthermore, even with no finding of error, it is likely that the Second Circuit will dismiss Judge Marrero's finding that a trademark should never be granted for the use of a single color for fashion items, as a broad per se rule against color trademark in fashion conflicts with Qualitex and contradicts the Trademark Technical and Conforming Amendment Act. If the Second Circuit does find an error in the application of the law, it will still likely rule this case narrowly and require that Louboutin prove his trademark is not overly broad.

Though red-soled shoes almost instantly conjure up the name "Louboutin" for casual fashion consumers, a broad prohibition against red would be anti-competitive. Louboutin identified his signature color as Pantone No. 18-1663 TP or "Chinese Red." And while YSL allegedly has never used this particular color on its outsoles, without a narrow description of what the trademark protects, Louboutin, and more importantly the courts, cannot determine where the line of infringement ends and competition begins. Without a narrow construction, Louboutin would hold a monopoly on shoes with red outsoles. Louboutin incorrectly asserted on his trademark registration that only he uses red on the soles of shoes. However, as YSL pointed out, red has been used on shoe soles for centuries. Furthermore, both YSL and Valentino have used red for shoe soles in the past.

If the court establishes that Louboutin has a valid and protectable trademark, it will rely on the factors identified by the Second Circuit in Polaroid Corporation v. Polarad Electronics Corporation to determine whether YSL infringed the trademark. The Polaroid factors only apply in the Second Circuit, though other circuits have similar variations. The factors include:

    the strength of plaintiff's mark;
    the degree of similarity between the products;
    the proximity of the products or services;
    the likelihood that plaintiff will bridge the gap;
    evidence of actual confusion;
    the defendant's good faith in adopting the mark or lack thereof;
    the quality of defendant's product or service;
    and the sophistication of the buyers.

Of the eight factors, none alone are dispositive. The flexible nature of the factors permits courts significant discretion in applying them. Therefore, most factors can be construed to favor one party or another. Though the court has significant discretion, Louboutin has persuasive factors in the strength of its marks and the degree of similarity between the products.

In order to receive broad protection, Louboutin should have waited for an imitator to use a red-sole with a contrasting shoe color. By bringing the suit against YSL's monochromatic shoes, Louboutin forced the court to address aesthetic functionality as to whether or not other companies can fairly and effectively compete for prospective consumers without using red on their shoes. This forced the court to opine that in fashion a depletion of colors would be anti-competitive in nature, and thus impermissible. The manner in which Louboutin framed the issue by pursuing a monochromatic shoe may lead the court to afford a much narrower protection to Louboutin than an action against a closer imitation of a Louboutin shoe.

There may be some concern that Louboutin could endanger itself by becoming a generic mark. Both The New York Times and New York Post have published highly publicized articles on the emergence of cobblers painting their customers' shoes red and nail salons offering a "Louboutin" treatment by painting the underside of customers' nails red. The continuing reference to anything with red on the underside should be of significant concern to Louboutin.

The Louboutin case demonstrates both the best and worst of trademark law. On one hand, trademark law should have rewarded Louboutin for the effort expended in building his brand and achieving secondary meaning. The decision also reflects that trademark law has been contextual. Though people can cite the various single color trademarks, including brown for UPS trucks and Tiffany's blue product packaging, fashion presents a position where courts should consider the depletion theory.

The Second Circuit should provide a narrow protection for Louboutin. He did not exert significant effort in attempting to create a recognizable trademark; rather he was attempting to create something aesthetically pleasing. It would be detrimental for fashion if designers could not create monochromatically red shoes or red-soled shoes without the fear of litigation. Ultimately, the court must determine whether the competitive disadvantages of enforcing this trademark will outweigh the advantage of reinforcing both Louboutin's registered mark and the effort exerted by Louboutin in achieving secondary meaning.

Mark Guffanti attended Fordham University where he studied political science. He also studied international and comparative law at the Université Paris I Panthéon-Sorbonne Summer Institute.

Source: http://jurist.org/dateline/2011/11/mark-guffanti-trademark-law.php

Porn Studio Considers Trademark Infringement Lawsuit Against HTC

By: Erica Thinesen
Source: Source: http://www.itproportal.com


Vivid Entertainment, a porn studio, claims trademark infringement by HTC and has threatened to sue the electronic giant.

The allegations against HTC is that their smartphone HTC Vivid infringes the trademark right of Vivid Entertainment, as reported by U.S. entertainment site TMZ.

Vivid Entertainment is a giant name in the porn industry. This studio is known for disclosing sex tapes of Paris Hilton and also Kim Kardashian. However, it is not very likely that consumers might mistake the Vivid smartphone and Vivid the porn studio that makes naughty films for adult viewers.

According to TMZ reports, the port studio threatened HTC to change the name of its smartphone by Monday or face a suit for trademark infringement. In fact, the studio has also sent a cease and desist letter to HTC America claiming the same.

Attorney Mark Hoffman, for Vivid Entertainment, claims, in a statement, that the use of HTC America's the Vivid trademark "creates the false impression that your company and your company's products are affiliated, connected, or associated with and or sanctioned by Vivid Entertainment."

On this matter, HTC has decided to maintain a dignified silence.


Source: http://www.itproportal.com/2011/11/17/pron-studio-considers-trademark-infringement-lawsuit-against-htc/#ixzz1e1sDU2Dd

‘The Situation’ Sues Abercrombie and Fitch for Trademark Infringement

By: Nicole Howley
Source: : http://www.justicenewsflash.com



Miami, FL — Michael “The Situation” Sorrentino of MTV’s hit TV show the “Jersey Shore” has filed a lawsuit against retailer Abercrombie & Fitch for an alleged publicity stunt in order to sell the retailer’s clothes with Sorrentino’s catch phrases used in the show, reported MSNBC.

The lawsuit was filed in a federal court in southern Florida by Sorrentino and his company, MPS Entertainment.

The lawsuit was filed after A&F publicly stated in August that they would pay the reality TV show cast members not to wear their clothing. Sorrentino asserts that the offer was false. Sorrentino reportedly never received an offer, nor did a representative ever communicate that to Sorrentino.

But, A&F stated that they were “deeply concerned” that Sorrentino “could cause significant damage” to its brand’s “aspirational nature,” MSNBC reported.

“Starting in August 2011, Defendant (the company) embarked on a grand, worldwide advertising campaign using Sorrentino’s name, image and likeness to create brand awareness for its products by falsely claiming that Defendant had offered money to Sorrentino if he would stop wearing Defendant’s goods,” the lawsuit read.

The lawsuit is also going after A&F T-shirt designs that feature phrases like “The Fitchuation” and “GTL… You Know The Deal.” Abercrombie & Fitch “obviously intended to create a false association” with the “Jersey Shore” star when it released it’s statement in August, MSNBC reported.

In 2009, Sorrentino and MPS Entertainment trademarked “The Situation” and “GTL,” which is an acronym for gym, tan, laundry.


Source: http://www.justicenewsflash.com/2011/11/17/the-situation-sues-abercrombie-and-fitch-for-trademark-infringement_201111179056.html

No Evident Infringement in Tennis Gear Dispute

By:IULIA FILIP
Source: http://www.courthousenews.com


ATLANTA (CN) - A company that sells a tennis gauze product will not have to face trademark-infringement claims from the makers of Tourna Grip racket padding, which counts world-class tennis players among its fans, a federal judge ruled.

Claiming that Tourna Grip boasts a distinctive light blue color, Unique Sports Products sued Ferrari Importing Company dba Gamma Sports for trademark infringement.

Tennis players can wrap Tourna Grip around the grip of their rackets to provide additional cushioning and moisture absorption. The product has been manufactured and sold in light blue since 1977 by a company Unique acquired in 1992.

According to Unique's complaint, Tourna Grip is preferred by many professional tennis players, including Pete Sampras, Andre Agassi, Venus Williams and Maria Sharapova.

"In 1999 when Unique applied for a trademark, Tourna Grip was the most successful tennis grip tape product, with over 50 percent of the market and $40 million in cumulative sales," the court noted. "Tourna Grip continues to be the most successful tennis grip tape product."

Unique received a federal trademark registration for the color light blue used for "grip tape for sports rackets" in February 2001.

Ferrari, a company that sells specialty sporting goods accessories, offers a gauze tape in a light blue-green color. Like its competitor Unique, Ferrari advertises the product in tennis magazines, sporting goods catalogs and on the Internet.

Unique, which spends about $250,000 a year on advertisements that emphasize Tourna Grip's light blue color, among other attributes, claimed that Ferrari's product infringed on its registered trademark. Unique argued that the light blue color distinguished its product from other companies' similar products and thus had secondary meaning, which connects the mark to the product's maker in the consumer's mind.

But Ferrari countered that other companies sold light blue grip tape before Unique's mark acquired secondary meaning.

U.S. District Judge Thomas Thrash agreed that Unique had a valid trademark, but said Ferrari did not infringe on it. Unique had spent millions of dollars promoting a connection between Tourna Grip and the light blue mark. The company's ads use expressions such as "the blue Tourna Grip," "blue tape" and "the original light blue grip," which made the product recognizable by its color, according to the Oct. 27 order.

"The plaintiff has shown that it has marketed light blue Tourna Grip since 1977, that it made considerable efforts to associate the light blue mark with Tourna Grip, and that its use of the mark has been substantially exclusive," Thrash wrote. "Thus, light blue acquired secondary meaning. For this reason, Unique's light blue trademark is valid."

But Ferrari's grip tape products, which feature various shades of blue, are not confusingly similar to Tourna Grip, Thrash found, noting that Ferrari's gauze tape is almost teal, while Tourna Grip has a purple hue.

Shade is not the only attribute that distinguishes the two products. Unlike Unique's Tourna Grip, which is smooth, has a speckled appearance and provides moisture absorption, Ferrari's tape has a rough woven appearance and does not absorb moisture as well as Tourna Grip, Thrash added. Wraps like Tourna Grip are also softer, thicker and provide more cushioning than gauze tape. And while Tourna Grip is affixed to the racket handle by a separate piece of tape, gauze is self-adhesive, the order states.

Unique and Ferrari may have similar methods of advertising, but "the packaging of the products makes it virtually impossible to confuse the source of the product as it is offered for sale," Thrash noted.

"Due to differences in appearance, feel, and performance [between Tourna Grip and gauze tape], consumers generally prefer one or the other," he wrote.

Source: http://www.courthousenews.com/2011/11/15/41462.htm

Serta Sues Designer in Trademark Infringement Matter

By: Jonathan Stempel
Source: http://www.claimsjournal.com


Serta Inc sued Oleg Cassini Inc to stop threatened litigation by the fashion designer related to the sale of mattresses bearing the Cassini name at J.C. Penney Co stores.

In a complaint filed in Chicago federal court, Serta said it stopped selling its Perfect Day Cassini mattress model in J.C. Penney stores after Oleg Cassini in September accused it of infringing a trademark dating to the early 1950s.

Source: http://www.claimsjournal.com/news/national/2011/11/14/194985.htm

Jenner & Block Expanding its Representation of Clients in the Media and Entertainment Industries With the Addition of Six Partners in its Los Angeles Office

By: Jenner & Block
Source: http://www.sacbee.com

LOS ANGELES, Nov. 10, 2011 -- /PRNewswire/ -- Jenner & Block today announced that it is expanding its Los Angeles office and its representation of clients in the media and entertainment industries with the addition of six new partners.  Highly experienced courtroom attorneys Richard L. Stone, Kenneth D. Klein, Julie A. Shepard, David R. Singer, and Amy M. Gallegos join the Firm's Litigation Department, while noted transactional attorney Carissa C. W. Coze joins the Corporate Department. 

All of the attorneys will become part of the Firm's acclaimed Content, Media & Entertainment practice.  This group, which previously practiced at Hogan Lovells LLP in Los Angeles, has represented numerous clients, including extensive work recently for News Corporation and many of its current and former subsidiaries, such as Fox Broadcasting Company, Dow Jones, Harper Collins and MySpace.  Jenner & Block also represents, and over the years has represented, various News Corporation entities.

This team of attorneys has been lead trial counsel in a wide variety of cases for entertainment and media clients, including business litigation directly related to the financial crisis, large scale class actions and cutting edge trademark and copyright cases.  On a transactional front, they have been responsible for strategic mergers, acquisitions, divestitures, and key licensing deals in a broad array of media.

Jenner & Block's Los Angeles office opened in 2009 with two former Kirkland & Ellis partners, Rick Richmond and Brent Caslin.  With the addition of these six new partners, there will now 24 lawyers, including 14 partners, in Jenner & Block's Los Angeles office. 

"The Los Angeles office continues on its impressive trajectory of hiring outstanding lawyers in the community and is further evidence of the Firm's overall strategic growth plan," said Jenner & Block Managing Partner Susan C. Levy.  "These lawyers bring proven records of achievement and further enhance our ability to serve client needs.  Their practices are complementary to the Firm and its existing clients.  We are delighted to welcome them to the Firm."

"We have been working together as a team for many years and the opportunity to move together to work at Jenner & Block to help build upon its existing group of leading media and entertainment clients was ideal," Mr. Stone said.  "This was the perfect fit for us and where we see our practice expanding well into the future."

Added Mr. Richmond, the Managing Partner of Jenner & Block's Los Angeles office: "This is a great day for the Los Angeles office.  These new partners provide us with an increased ability to expand our representation of a wide spectrum of clients both in southern California and across the country."

Co-Chair of Jenner & Block's Content, Media & Entertainment practice, Andy Bart, agrees:  "This group of outstanding lawyers both strengthens and expands our existing practice, and gives us real depth in the Los Angeles market.  In addition to traditional content and entertainment litigation, our new partners bring extensive experience in business litigation for entertainment sector companies and a sophisticated IP transactions capability.  We are thrilled."

Joining the Los Angeles office of Jenner & Block are:

Richard L. Stone

Richard Stone is a leading trial lawyer with an emphasis on the media and entertainment industries.  Mr. Stone's experience extends to litigating antitrust, copyright, trademark patent, piracy, securities, commercial fraud and related business tort cases.  He has also handled numerous shareholder, consumer and antitrust class actions.  Mr. Stone represents Fortune 100 and smaller companies engaged in the entertainment, communications, internet, finance, high technology, transportation and retail industries, among others.  He received a BA from the University of California, Los Angeles and a JD from Loyola Law School in Los Angeles.

Kenneth D. Klein

A Fellow of the American College of Trial Lawyers, Mr. Klein prepares and tries complex business cases.  His experience includes a wide range of litigation matters that have resulted in numerous trials in both federal and state courts.  He has served as lead counsel in a substantial number of cases, including litigation involving breach of contract, fraud, sexual and racial discrimination, accounting malpractice, consumer class actions, tortious interference, and anti-trust.  Mr. Klein earned a BA from the University of Michigan and a JD from Columbia Law School.

Carissa C. W. Coze

Ms. Coze represents public and privately held media, entertainment and technology companies in a broad range of corporate and securities transactions, including mergers and acquisitions, joint ventures, strategic investments, public equity and debt securities offerings, tender offers, technology acquisitions, and venture capital and private equity financings.  She also works extensively with software developers, semiconductor device and equipment manufactures and solar and other renewable energy equipment manufacturers and developers.  Ms. Coze routinely counsels U.S. and international companies regarding insider trading compliance, corporate disclosure, corporate governance, and other corporate and securities matters.  She received a BA from the University of California, Davis, a Masters in Public Policy from the Goldman School of Public Policy at the University of California, Berkeley and a JD from the University of California, Berkeley.

Julie A. Shepard

Ms. Shepard has a broad-based commercial, entertainment, and intellectual property litigation practice.  Her practice includes defending clients in class actions, shareholder derivative suits, and business torts.  Ms. Shepard has also defended clients' rights in matters involving unfair competition, copyright infringement and trademark infringement, and trade secret misappropriation.  In recent engagements, she has seen cases through to verdict in various federal and state courts, and practiced before the American Arbitration Association and the International Chamber of Commerce.  Ms. Shepard earned a BA from the University of California, Berkley and a JD from the University of the Pacific, where she graduated No. 1 in her class.

David R. Singer

Mr. Singer's primary focus is entertainment and media litigation.  He has significant experience with intellectual property disputes involving copyrights, licensing, trademarks, and trade secrets.  Through his representation of movie studios, television production companies, and media conglomerates, Mr. Singer is well-versed in the disputes that typically arise in the entertainment and telecommunications industries.  A substantial portion of his practice is also devoted to Internet-based disputes and privacy law, and he represents and counsels some of the largest and most visited Web sites on the Internet.  Mr. Singer received a BA and JD from the University of Pennsylvania.

Amy M. Gallegos

Ms. Gallegos is a skilled litigator who has represented clients at the trial court and appellate levels in a wide variety of complex commercial disputes.  She has substantial experience in class action defense, antitrust, unfair competition, and intellectual property litigation.  Ms. Gallegos has also represented clients in the media and entertainment industries in disputes relating to copyright infringement, network programming and licensing, and Internet law.  Ms. Gallegos received a BA from the University of California, Berkeley and a JD from the University of California, Los Angeles.

Jenner & Block is a national law firm with approximately 470 attorneys and offices in Chicago, Los Angeles, New York and Washington, DC.  Founded in 1914, the Firm has grown and prospered because of an unwavering commitment to our clients, to the Bar, to our people and to public service. Jenner & Block has been widely recognized for consistently delivering excellent legal representation in the courtroom and the boardroom.  The Firm has also traditionally served as a leader in public service and pro bono advocacy, having been consistently ranked as one of the top 10 pro bono firms in the country by The American Lawyer magazine.

Source:  http://www.sacbee.com/2011/11/10/4045312/jenner-block-expanding-its-representation.html#ixzz1deXCMWAn

Jury Sides With Seacrets In Trademark Suit

By: Shawn J. Soper
Source: http://www.mdcoastdispatch.com


A popular Ocean City establishment was successful this week in its trademark infringement lawsuit against a travel destination company and its subsidiaries that piggybacked on its success and name recognition with a series of similar resorts in and around the Caribbean.

A U.S. District Court jury this week ruled in favor of O.C. Seacrets, the corporation that owns and operates the popular Seacrets nightclub complex along a three-block section of the bayfront in Ocean City, in its trademark infringement civil suit against the Coryn Corporation and its subsidiaries, which have opened nine resort destinations in Jamaica, Mexico, the Dominican Republic and other areas operating under the name “Secrets.”

After a seven-day trial, the federal jury deliberated just over two hours on Tuesday before returning with a favorable outcome for O.C. Seacrets and a $1 award for the plaintiff, along with punitive damages.

For Seacrets’ owner Leighton Moore, the case was less about a possible financial award and more about protecting his company’s intellectual property and the goodwill and reputation his company has earned over several years of successful operation in Ocean City. While Coryn was also hit with a little over $200,000 in punitive damages, the $1 award for Seacrets was more symbolic, according to Moore.

“We won the case and we got a dollar,” said Moore this week. “I’ve said all along this wasn’t about the money. So, we got a $1 award and I will frame it and hang it on the wall.”

In October 1997, O.C. Seacrets successfully registered the trademark “Seacrets” for “restaurant and bar services” at its location along the bay at 49th Street. Over the years, the restaurant and nightclub complex expanded to a three-block area including several bars, restaurants, a nightclub, a hotel, condominiums and its own radio station. According to court documents, the complex draws between 4,000 and 6,000 guests each weekend during the summer season.

In June 2000, Coryn filed an intent-to-use application for the trademark “Secrets” for “resort hotel services” with the U.S. Patent and Trademark Office, which officially registered the “Secrets” mark for Coryn in October 2003. In January 2004, O.C. Seacrets petitioned the patent office’s Trademark Trial and Appeals Board (TTAB) to cancel Coryn’s “Secrets” mark, arguing that its own mark “Seacrets” covered services closely related to if not identical to “resort hotel services” and there was a likelihood of confusion between the marks.

In August 2008, the TTAB ordered the cancellation of Coryn’s registration because O.C. Seacrets had a priority of usage in its Seacrets mark and there was a likelihood of confusion between the marks. The TTAB also denied Coryn’s petition for partial cancellation or restriction because it found the proposed restriction would not avoid confusion.

In October 2008, Coryn appealed the TTAB’s decision to the U.S. District Court. In December 2008, O.C. Seacrets counterclaimed for trademark infringement and unfair competition under the Lanham Act and Maryland common law, which is how the case ended up in front of a jury in U.S. District Court.

“The jury found they were culpable,” said Moore this week. “They acquired the trademark under less than above-board circumstances. They didn’t do it accidentally, they did it with malicious intent.”

According to Moore, not only did Coryn use the name and borrow liberally from the success of the Ocean City operation, they continued to do so even after the TTAB ordered the cancellation of its “Secrets” trademark usage.

“It was taken from them in 2008 but they appealed, and they continued to build ‘Secrets’ while their trademark was in a state of suspension,” he said.

While the federal jury sided with Moore and Seacrets this week, Coryn is not legally bound to change the name of its nine “Secrets” resorts around the Caribbean because they are not in the U.S. However, the outcome prohibits Coryn from marketing its “Secrets” resorts to the vacation-minded public in this country, which might have confused the destinations with the popular nightclub complex in Ocean City.

“They’re out of the country, so they can still legally use that name, but they can’t use the name to market their resorts anywhere in this country,” said Moore. “If they can’t market them to their target audience in this country, they’re probably going to change the name.”

Meanwhile, the victory in the trademark suit on Tuesday is just part of the good news this week for Moore, who will be honored tomorrow night with the second annual Hal Glick Community Service Award at a special gala at the Clarion.

The award, which was begun last year by a group of local business and community leaders and is named for its inaugural recipient, honors outstanding service to the resort and surrounding areas through philanthropic endeavors and community leadership.

With the resolution of the trademark suit this week, Moore said he ready to do even more in the community.

“I’ve been bogged down with this case for a couple of years now and I haven’t been able to do as much as I usually do,” he said this week. “With this behind me, I’m ready to jump back in again.”

Source: http://www.mdcoastdispatch.com/articles/2011/11/11/Top-Stories/Jury-Sides-With-Seacrets-In-Trademark-Suit

Switch sues man for trademark infringement, unlawful domain-name trafficking

By: Yevgeniy Sverdlik
Source: http://www.datacenterdynamics.com

Switch, operator of a large Las Vegas data center campus Super NAP, has filed a lawsuit against a Canadian citizen, charging him with trademark infringement, business news publication Vegas Inc. reported.

Dorian Banks, of Vancouver, registered an Internet domain name Switch.net in October. Banks, CEO of wireless Internet services provider Metrobridge Networks, told Vegas Inc. he had not heard of the plaintiff when he bought the domain name through an auction.

In addition to trademark infringement charges, Switch said in its lawsuit filed in a federal court in Las Vegas that Banks wrongfully attempted to profit from ownership of the domain by offering to sell it to the data center provider as soon as he bought it.

Switch charged that Banks’ offer to sell the domain to the company for about US$3,700 violated the federal Anticybersquatting Consumer Protection Act by having had "bad faith intent to profit from registering, trafficking in or using a domain name or mark that is either identical or confusingly similar to a distinctive mark,” according to Vegas Inc.

According to the lawsuit, Switch said Banks threatened to sell the domain to someone else as the company evaluated his initial offer if it did not take the offer quickly.

Switch asked the court to issue a restraining order on Banks to prevent him from using its names and trademarks. The company also asked the domain-name registrar to transfer ownership of the Switch.net name to the company.

Banks denied the allegations, saying he approached Switch in Las Vegas after a Swiss company, also called Switch, objected to his acquisition of the name. He told Vegas Inc. that he offered to sell the domain to the Las Vegas company for the same amount he paid for it at the auction so that it could try and resolve the dispute with the Swiss organization.


Source: http://www.datacenterdynamics.com/focus/archive/2011/11/switch-sues-man-for-trademark-infringement,-unlawful-domain-name-trafficking

Las Vegas Switch data center in trademark dispute

By: Steve Green
Source: http://www.vegasinc.com


Switch Communications Group LLC, operator of a big data center in Las Vegas, sued a Canadian man on Wednesday in what it calls a trademark dispute.

Switch charged in the suit that Dorian Banks in Vancouver, British Columbia, infringed on Switch’s trademarks when Banks registered the switch.net Internet domain name last month.

Switch Communications Group said in the lawsuit it operates the "world’s most powerful data center and technology ecosystems" and has a website at switchnap.com.

Besides the trademark claim, the lawsuit also alleges that Banks violated the federal Anticybersquatting Consumer Protection Act because Banks had a "bad faith intent to profit from registering, trafficking in or using a domain name or mark that is either identical or confusingly similar to a distinctive mark" or a famous mark.

Switch charged in the lawsuit that after registering the switch.net name on Oct. 15, Banks contacted the Las Vegas Switch company and offered to sell it the domain name for about $3,700.

"While plaintiff evaluated the offer to negotiate the purchase of the domain name, defendant threatened to sell the domain name to another entity if plaintiff did not hurry and open escrow to buy the domain name," charged the lawsuit filed in federal court in Las Vegas by attorneys at the Las Vegas office of the law firm Greenberg Traurig LLP.

Switch in the suit asks the court for a restraining order requiring Banks to stop using Switch Communications’ names and trademarks and that the domain name registrar transfer the switch.net name to Switch Communications.

Banks, in an interview, denied the allegations of trademark infringement and cybersquatting.

Banks said he is CEO of Metrobridge Networks International Inc., a wireless Internet provider, http://www.metrobridge.com/index.asp and that he had never heard of the Las Vegas company when he bought the switch.net name at an auction.

He said the switch.net domain name was locked down after the auction because of a protest by a third company in Switzerland called SWITCH http://www.switch.ch/, which offers services to Swiss universities and Internet users.

Banks said that after the Swiss company objected to his registration of the switch.net name, he offered to sell it to the Las Vegas company for what he paid for it.

That way, he said, the Las Vegas company could try to gain control of the name and he could quit worrying about the dispute.

Asked about being branded in a lawsuit as a trademark infringer and cybersquatter, Banks said: "It really bothers me."


Source: http://www.vegasinc.com/news/2011/nov/09/las-vegas-switch-data-center-trademark-dispute/

Groupon, Apple, Adidas, Amazon, Google: Intellectual Property

By: Victoria Slind-Flor
Source: http://www.businessweek.com


(This is a daily report on global news about patents, trademarks, copyright and other intellectual property topics.)

Nov. 9 (Bloomberg) -- Groupon Inc., the company that provides daily deal coupons, was sued for infringement by a California patent holder.

Mobile Commerce Framework Inc., of Mission Viejo, California, accused Chicago-based Groupon of infringing patent 7,693,752. This patent, which was issued in April 2010, covers “a subscription-based system for providing commerce information for one or more mobile devices for one or more merchants,” according to the patent document.

According to the U.S. Patent and Trademark Office of patent ownership-changes, Mobile Commerce Framework acquired its interest in the patent in March, one month before the patent actually was issued.

Groupon is the third company Mobile Commerce has sued for infringing this patent. In August an infringement suit was filed against Foursquare Labs Inc. of New York. Mobile Commerce also filed a patent infringement suit against San Francisco’s Yelp Inc. user-review and local-search service.

In the suit against Groupon, Mobile Commerce said a variety of Groupon products, including apps for Apple Inc.’s iPad and Research in Motion Ltd.’s Blackberry infringe the patent. The California company claims it has suffered “irreparable injury” as the result of Groupon’s actions.

It asked the court to bar further infringement, and to order Groupon to withdraw and destroy all allegedly infringing products. Additionally, the company asked for awards of money damages, and interest on those damages.

Neither Groupon nor Yelp responded immediately to an e- mailed request for comment. Foursquare responded to its suit with a May 13 filing in which it denied infringing the patent and argued that the patent was invalid and unenforceable.

Mobile Commerce is represented by Jonathan Hangartner of X- Patents APC of La Jolla, California.

The suit against Groupon is Mobile Commerce Framework Inc. v. Groupon Inc., 3:11-cv-02586-MMA-WMC, U.S. District Court, Southern District of California (San Diego).

The suit against Yelp is Mobile Commerce Framework Inc. v. Yelp Inc., 3:11-cv-02589-MMA-MDD, U.S. District Court, Southern District of California (San Diego).

The suit against Foursquare is Mobile Commerce Framework Inc., v. Foursquare Labs Inc., 3:11-cv-00481-BEN-BLM, U.S. District Court, Southern District of California (San Diego).

Jobs Listed as Inventor on Two New U.S. Patents For Apple

Steve Jobs’ influence continues to be felt at Apple Inc., the Cupertino, California-based company he founded.

He is one of the named inventors on two new patents issued yesterday to Apple, according to the new-patent database of the U.S. Patent and Trademark Office. Jobs, who died of pancreatic cancer Oct. 5, is one of 15 inventors named on each patent.

The company has become best known in recent years for its iPhone and iPad. Both patents -- D648,333 and D648,334 -- are design patents for laptop computers.

Applications for the two patents were filed in January and June, respectively. Typically design patents are issued much more rapidly than others, which often take years to move through the patent office.

Trademark

Adidas, Pacific Brands Take Shoe-Stripe Trademark Case to Court

Adidas AG and Pacific Brands Ltd. are facing off in court in Australia over a stripe design for athletic shoes, Australia’s Herald Sun reported.

Herzogenaurach, Germany-based Adidas has told Australia’s federal court that Pacific Brands was selling knockoff athletic shoes with four stripes that infringed on the German company’s three-stripe design, according to the Herald Sun.

Even though Pacific Brands is no longer distributing the alleged copies, Adidas said it was going ahead with the suit to discourage other makers of knockoffs, the Herald Sun reported.

Pacific Brands, based in Hawthorn, Australia, was distributing the shoes to which Adidas objected through small outlets, according to the newspaper.

Schools Get ‘.XXX’ Domains to Bar Pornographers’ Use of Marks

In efforts to protect their trademarks, universities have begun registering their websites with the new “.xxx” suffix intended for sexually explicit content, United Press International reported.

The domain names cost about $200, “so I don’t see any reason not to do it,” said Greg Jackson, vice president for policy and analysis at Educause, an organization that promotes the use of technology in higher education, according to UPI.

The universities are taking the step to prevent others from using their trademarks in the adult-content world, UPI reported.

Two of the schools that have already registered their marks with the “.xxx” domain suffix are the University of Missouri and Washington University, according to UPI.

Two Competing ‘Rally Squirrel’ Trademark Applications Filed

Eight days before the St. Louis Cardinals baseball team won the World Series Oct. 28, a Missouri company submitted an application to the U.S. Patent and Trademark Office to register “Rally Squirrels” as a trademark. A second application submitted by a different party was filed two days after the final game.

The original “rally squirrel” got his name after he ran across home plate during a playoff game between the Cardinals and the Philadelphia Phillies. The squirrel became a focus for fan enthusiasms during the World Series, with a local hospital raising more than $200,000 through its sale of Rally Squirrel t- shirts and other souvenir goods, KDSL television reported on its website.

According to the patent office database, PBR Industries of Fenton, Missouri, is seeking the mark for promotional products, including clothing, drinkware, novelty products, office supplies and sporting goods. The PBR application doesn’t state a date of first use of the term.

Two days after the big win, a Florida resident filed an application for the same mark. Sean Patrick Sullivan of Delray Beach, Florida, said he would use the mark on wearable garments. He claimed he first used it on Oct. 12.

When parties are competing for the same trademark, the date of first use -- namely when merchandise bearing the mark is first shipped -- is important. If that date can be proven, it will give the applicant with the earliest date the more senior rights to the trademark.

Copyright

Amazon’s Kindle Unit Gave Away Novel for Free, Writer Complains

Amazon.com Inc. gave away more than 5,000 copies of a Washington D.C.-based writer’s self-published book for free, the writer claimed.

James Crawford is the author of “Blood Soaked & Contagious,” a zombie-themed novel. He said in a blog posting that he signed up to publish digital copies of his book through Seattle-based Amazon’s Kindle Direct Publishing. The book was to be sold for $5.99 per download.

According to his contract with Amazon, if the company discovers the book for sale anywhere else at a lower price, it can match that price if it chooses to, Crawford said.

He had listed a teaser version of the first three chapters of the book for free through Barnes & Noble Inc.’s website, and found that Kindle Direct Publishing mistakenly considered this to be the entire novel. So his price on the Amazon site had “magically been discounted 100 percent,” and before he removed the book for sale through the Amazon website, Kindle “has given away 5,104 copies of the book for free,” Crawford said.

He removed the book from the Amazon listing and contacted the company to complain.

In his blog Crawford posted a response letter sent to him by Kindle Direct Publishing on Oct. 7. In that letter Amazon says that it can’t pay any royalties on sales that took place when the book was listed for $0 on the website. Amazon said that if Crawford resubmitted the book, the price will be corrected.

When accessed yesterday, the Amazon.com website listed Crawford’s book for $5.99 in an edition for the company’s Kindle electronic reader.

Google Sent DMCA Takedown Notice Over Scarlett Johansson Photos

Actress Scarlett Johansson sent Google Inc. a letter demanding the removal of nude photos of herself.

The letter, sent on Johansson’s behalf by Lavely & Singer PC of Los Angeles, specifies that even though the photos were registered with the U.S. Copyright Office, they aren’t authorized for publication.

Johansson demanded their removal under the “takedown” provision of the Digital Millennium Copyright Act. The photos, which allegedly appeared on two different websites, are “copies of highly personal and private photographs which capture our client self-posing in her own home in a state of undress and/or topless,” the firm said in the letter.

The letter was posted on the Chilling Effects website, which tracks takedown requests made under the DMCA. The site is a joint project of the San Francisco-based Electronic Frontier Foundation and Harvard, Stanford, Berkeley, University of San Francisco, University of Maine, George Washington School of Law, and Santa Clara University School of Law clinics.

Trade Secrets/Industrial Espionage

AU Optronics, TSMC Call For Taiwan Law Over Trade Secret Theft

AU Optronics Corp. and Taiwan Semiconductor Manufacturing Co. are among the Taiwanese companies asking for a new law against industrial espionage, Agence France Presse reported.

The companies told Taiwan’s President Ma Ying-Jeou a new law is needed in the wake of increasing theft of trade secrets in their country, according to AFP.

The high tech companies told the president that presently offenders are prosecuted for violating laws against breach of trust and embezzlement and penalties associated with those violations aren’t severe enough to halt the growing problem, AFP reported.

Source: http://www.businessweek.com/news/2011-11-09/groupon-apple-adidas-amazon-google-intellectual-property.html

New York Times vs. Huffington Post: Round Two

By: John Koblin
Source: http://www.wwd.com

The New York Times has upped the ante in its dispute with The Huffington Post over Lisa Belkin’s Parentlode blog.

Times Co. lawyers filed a lawsuit suit against Huffington Post parent company AOL on Friday, claiming that the Parentlode blog name constitutes trademark infringement.

As WWD first reported, the Times sent a cease-and-desist letter over the blog’s name and the use of a “motherlode” tag in the Parentlode’s opening post on Oct. 24. Earlier that same day, The Huffington Post launched Parentlode, which is written by Belkin, the longtime Times writer who founded nytimes.com’s Motherlode blog three years earlier. Belkin left the Times for HuffPo in October.

According to the Times’ complaint, AOL lawyers responded to the cease-and-desist on Oct. 27 and argued that the “Parentlode trademark is not likely to cause confusion with the NYTCo’s Motherlode trademark.” The Huffington Post did remove the “motherlode” tags, but that is as far as AOL and The Huffington Post would go, wrote Times lawyers.

The Times suit argues that the name Parentlode “has no particular meaning and could not have been selected for any reason but to create an association with NYTCo’s established Motherlode trademark.” They also said that the name Parentlode is a “deliberate attempt to mislead readers into mistakenly believing it was the same blog, albeit with a slightly different name and location.”

The suit was filed in the U.S. District Court in New York but AOL has not yet been served.

A Huffington Post spokesman did not respond to requests for comment.


Source: http://www.wwd.com/media-news/fashion-memopad/new-york-times-vs-huffington-post-round-two-5355619

Interim relief for Cadbury in trademark infringement case

By:Hary M. Pillai
Source: http://www.lawetalnews.com


Delhi High Court has issued an ex-parte interim injunction against a local garment manufacturer – Lodha Garments preventing them from using the trademark Cadbury, in a suit filed by one of the world’s largest confectionary company, Cadbury UK Ltd and its Indian subsidiary Cadbury India Ltd, alleging infringement of their world renowned trade mark “Cadbury” by the defendant company.

Justice Manmohan Singh before whose bench the matter was listed felt that prima facie a strong case was made out that the trade mark of the plaintiffs as well as their reputation was being used by the defendant company to pass off their goods as those of the plaintiffs.

The interim injunction shall be operational till the next date of hearing which is 7 January 2012.
In their suit, Kraft Foods promoted Cadbury UK Ltd and its Indian subsidiary had accused Lodha Garments of adopting a deceptively identical name to promote its product as that of the foreign firm and thus mislead consumers.


Source: http://www.lawetalnews.com/post.php?id=138

National Grange Sues New York City Based Agri-Business for Trademark Infringement

By: AG Weelely
Source: http://www.agweekly.com
WASHINGTON, D.C. - The National Grange today filed suit against a New York City based business that has used the Grange name without authorization.

The National Grange, the nation's oldest nonprofit agriculture and rural public interest organization, filed a complaint against Brooklyn Grange, LLC in the U.S. District Court for the Eastern District of New York for trademark infringement and unfair competition.

The move comes after Brooklyn Grange LLC continued unauthorized use and expansion of the National Grange's famous trademark GRANGE.

National Grange President Ed Luttrell said Tuesday that while the Grange did not initially seek to file suit, the move was necessary in order to protect the Grange's name and reputation.

"Filing a lawsuit in federal court is always a last resort, only used when all other attempts to resolve a conflict have failed. However, in order to protect the National Grange's exclusive rights to its famous and well known GRANGE trademark, the National Grange has a duty to prevent unauthorized use of its trademarks," Luttrell said.

Luttrell said this filing comes after talks between the two organizations failed.
 

"We have sought to engage the owners of Brooklyn Grange LLC in constructive dialogue for nearly 18 months, but we have been continually rebuffed," Luttrell said. "We've tried to explain our concerns with their unauthorized and expanding commercial use of our trademark to no avail."

The National Grange is the owner of the U.S. Trademark for the word GRANGE. The National Grange also owns the trademarks NATIONAL GRANGE; THE GRANGE FOUNDATION; NATIONAL GRANGE OF THE ORDER OF PATRONS OF HUSBANDRY; and the image of the seven sided GRANGE LOGO.

Dec. 4, 1867 to promote family farmers and agricultural interests, and first began using the GRANGE Trademark in 1876. It has long used the GRANGE Trademarks in the United States in connection with a variety of goods and services related to fresh and prepared foods and meal services. Commercial sales of food and meal-related services by local Grange chapters are used as fundraising programs that are re-invested in local Grange chapters to further the organization's non-profit, community service and agricultural education missions.
 

Today the National Grange's more than 162,000 members provide a variety of volunteer based, as well as commercial, goods and services to families and communities, through an extensive network of more than 2,500 state, county and local Grange chapters across America.

Brooklyn Grange LLC, located in Long Island City, N.Y., in Queens, is a recently formed, privately owned, for-profit, commercial agribusiness with business operations in the New York City area.

Brooklyn Grange LLC's agribusiness operations include the production and sales of produce, eggs and apiary products grown at their 80,000 square feet of rented space. These products are sold to commercial restaurants and other food service establishments in the New York City area and directly to the public via a network of commercial farmers markets. Brooklyn Grange also recently expanded their business to provide occasional prepared meals and alcoholic beverage services to the public at the site of their main production facility.

Luttrell reaffirmed the commitment of the National Grange to preventing unauthorized use of the Grange name and trademarks, saying, "We are committed to defending our GRANGE trademark against unauthorized, opportunistic usage by for-profit companies, like Brooklyn Grange LLC, in order to preserve the goodwill associated with the trademark GRANGE primarily for the benefit of, and use by, our 2,700 local Grange chapters."

Source: http://www.agweekly.com/articles/2011/11/04/news/ag_news/news69.txt

Seacrets Alleges Trademark Infringement In Civil Suit

By: Shawn J. Soper
Source: http://www.mdcoastdispatch.com

OCEAN CITY -- After years of claims, counterclaims and pre-trial motions, the multi-million dollar trademark infringement civil trial between a popular Ocean City nightclub complex and a corporation and its subsidiaries began in earnest this week.

The suit involves O.C. Seacrets, the corporation that owns and operates the popular Seacrets nightclub and restaurant complex over the three-block section of the bayfront in Ocean City, and the Coryn Corporation and its subsidiaries, which has since opened nine resort destinations in Jamaica, Mexico and the Dominican Republic operating under the name “Secrets.”

O.C. Seacrets is claiming the Coryn group’s use of “Secrets” is infringing on its trademark and goodwill and creating confusion for consumers.

While the exact amount being sought by O.C. Seacrets is not entirely clear, it is likely several million dollars, and a source close to the situation said this week the final total could approach $100 million if O.C. Seacrets is successful in the case. O.C. Seacrets is seeking all of the profits Coryn and its subsidiaries derived from the use of “Secrets” and is asking the award be tripled. In addition, O.C. Seacrets is seeking all damages it sustained as a result of Coryn’s trademark infringement and unfair competition and is asking that those damages be tripled as well.

In October 1997, O.C. Seacrets successfully registered the trademark “Seacrets” for “restaurant and bar services” at its location along the bay at 49th Street. Over the years, the restaurant and nightclub complex expanded to a three-block area including several bars, restaurants, a nightclub, a hotel, condominiums and its own radio station. According to court documents, the complex draws between 4,000 and 6,000 guests each weekend during the summer season.

In June 2000, Coryn filed an intent-to-use application for the trademark “Secrets” for “resort hotel services” with the U.S. Patent and Trademark Office, which officially registered the “Secrets” mark for Coryn in October 2003. In January 2004, O.C. Seacrets petitioned the patent office’s Trademark Trial and Appeals Board (TTAB) to cancel Coryn’s “Secrets” mark, arguing that its own mark “Seacrets” covered services closely related to if not identical to “resort hotel services” and there was a likelihood of confusion between the marks.

In August 2008, the TTAB ordered the cancellation of Coryn’s registration because O.C. Seacrets had a priority of usage in its Seacrets mark and there was a likelihood of confusion between the marks. The TTAB also denied Coryn’s petition for partial cancellation or restriction because it found the proposed restriction would not avoid confusion.
In October 2008, Coryn appealed the TTAB’s decision to the U.S. District Court.

In December 2008, O.C. Seacrets counterclaimed for trademark infringement and unfair competition under the Lanham Act and Maryland common law. After several claims and counterclaims, the jury trial finally began on Monday in U.S. District Court in Baltimore with opening statements and early testimony and entered its fourth day on Thursday.

According to the opinion of a U.S. District Court judge on a pre-trial motion to determine who is the plaintiff and who is the defendant in terms of who proceeds first in presenting its case, the burden of proof is on O.C. Seacrets.

“O.C. Seacrets has sued Coryn for trademark infringement and unfair competition,” court documents read. “To prevail on these claims, O.C. Seacrets must prove it has a valid protectable trademark and the Coryn is infringing on its mark by creating confusion, or a likelihood thereof, by causing mistake or deceiving as to the attributes of its mark.”

For the O.C. Seacrets team, however, the similarities are irrefutable.

“The ‘Secrets’ mark is confusingly similar to the ‘Seacrets’ mark and name in all respects and use of the ‘Secrets’ mark in connection with Coryn, Coryn II, and AMResorts’ goods and services is likely to cause confusion or mistake as to source of origin or services, thereby misleading and/or deceiving consumers,” O.C. Seacrets’  counterclaim reads. “Seacrets, Coryn, Coryn II and AMResorts use their marks in connection with the same types of related goods and services, and such goods and services are sold to the same class of purchasers.”

O.C. Seacrets is claiming the consuming public, on seeing the “Secrets” name on the destination resorts around the Caribbean, will assume it is affiliated with the original “Seacrets” in Ocean City and vice versa.

O.C. Seacrets also claims consumers familiar with the vacation destinations in Jamaica and elsewhere might assume the Ocean City nightclub complex came later.

“The consuming public, on seeing the ‘Secrets’ mark in association with Coryn’s goods and services, is likely to believe, erroneously, that such goods and services originate from or have some connection, affiliation or sponsorship with Seacrets, which they do not,” the counterclaim reads. “Such confusion, or the potential for reverse confusion, is a source of significant harm and damages to Seacrets and its registered mark and name.”

Source: http://www.mdcoastdispatch.com/articles/2011/11/04/Top-Stories/Seacrets-Alleges-Trademark-Infringement-In-Civil-Suit

Sonics Files Lawsuit Against Arteris for Patent Infringement

By: Press Release
Source: http://www.marketwatch.com

Sonics, Inc.(R), the world's number one supplier of on-chip communications IP, today announced that the company filed a patent infringement lawsuit against Arteris, Inc. on November 1, 2011 in the United States District Court, Northern District of California. The suit alleges that Arteris is willfully infringing on seven of Sonics' technology patents.

After previous business discussions failed to resolve Arteris' unauthorized use of Sonics' intellectual property (IP), the company has taken this next step to further protect its 15-year technology investments and trade secrets.

"Sonics is the world's largest supplier of on-chip network and memory subsystem IP, and has established itself as an industry leader in network-on-chip (NoC) solutions," said Grant Pierce, Sonics President and CEO. "For 15 years, Sonics has earned a proven track record with customers and established a reputation for leadership, technology innovation and design success."

Pierce continues, "We deeply respect this industry that we helped pioneer and advance, and have always honored our commitment to customers around the world to provide proven, reliable IP. Since 1996, we have invested significant resources in research and development -- as reflected in our extensive trademark and patent portfolios -- and remain steadfast in our promise to defend and assert our IP rights to protect these longstanding investments."

Sonics offers SoC designers the broadest array of on-chip communications IP in the world, and maintains an extensive portfolio of more than 110 patent properties to date. Sonics' licensees have shipped more than one billion chips worldwide, and Sonics remains committed to the success of its existing and new customer design initiatives.

A complete copy of the complaint is available at http://www.sonicsinc.com/complaint.htm .

About Sonics Sonics, Inc. is a pioneer of network-on-chip (NoC) technology and today offers SoC designers the largest portfolio of intelligent, on-chip communications solutions for home entertainment, wireless, networking and mobile devices. With a broad array of silicon-proven IP, Sonics helps designers eliminate memory bottlenecks associated with complex, high-speed SoC design, streamline and unify data flows and solve persistent network challenges in embedded systems with multiple cores. As the leading supplier of on-chip communications networks, Sonics has more than 110 patent properties and has enabled its customers to ship more than one billion units worldwide. Founded in 1996, Sonics is headquartered in Milpitas, Calif. with offices worldwide. For more information, please visit www.sonicsinc.com , www.sonicsinc.com/blog , and follow us on twitter at http://twitter.com/sonicsinc .

Sonics, Inc. and the company's logo are registered trademarks of Sonics, Inc. All other trademarks are the property of their respective owners.

Source: http://www.marketwatch.com/story/sonics-files-lawsuit-against-arteris-for-patent-infringement-2011-11-02

Court to hear Forbes' trademark infringement lawsuit on Nov. 8

By:RAPSI
Source: http://en.infosud.ru

MOSCOW, November 1 - RAPSI, Dmitry Shchitov. A court postponed until November 8 its hearing of Forbes Media's trademark infringement lawsuit against non-profit partnership of Neftyanik petrol stations for $93,000, the court told the Russian Legal Information Agency (RAPSI).

The Dagestan Commercial Court said it agreed to postpone the case as the claimant filed a petition to hold a forensic examination of the trademark.

Forbes Media also sought to prohibit the defendant from distributing printed publications illegally displaying the Forbes trademark.

Axel Springer Russia publishes and distributes the Forbes magazine in Russia and uses the Forbes trademark under a license agreement with Forbes Media LLC.

Source: http://en.infosud.ru/judicial_news/20111101/256948514.html