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TRADEMARKS

YIN HUANG

CONTENTS

WHAT IS A TRADEMARK?
Cheney Brothers v. Doris Silk Corp., 35 F.2d 279 (2d Cir. 1929) [3]............................................................. 8 Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964) [5]........................................................................... 8 Bonito Boats v. Thunder Craft Boats, 489 U.S. 141 (1989) [9]....................................................................... 8 The Trade-Mark Cases, 100 U.S. 82 (1879) [13]............................................................................................... 8 Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916) [21]....................................................................... 8 Stork Restaurant, Inc. v. Sahati, 166 F.2d 348 (9th Cir. 1948) [22]................................................................. 8 Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947) [27]..................................................................... 9 Associated Press v. All Headlines News Corp., 608 F. Supp. 2d 454 (S.D.N.Y. 2009) [S-6]....................... 9 Barclays Capital, Inc. v. Theflyonthewall.com, 2011 WL 2437554 (2d Cir. 2011) [S-7].............................9 Custom Manufacturing v. Midway Services, Inc., 508 F.3d 641 (11th Cir. 2007) [S-10]............................. 9 Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938) [44]........................................................................ 9 Coca-Cola Co. v. Koke Co. of America, 254 U.S. 143 (1920) [49]...............................................................10 Peaceable Planet, Inc. v. Ty, Inc. 362 F.3d 986 (7th Cir. 2004) [52]............................................................. 10 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) [63]....................................................... 10 Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) [78]....................................10 In re Application of Quik-Print Copy Shops, Inc., 616 F.2d 523 (C.C.P.A. 1980) [82]............................10 American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85 (Mass. 1899) [87]...................11 Rock and Roll Hall of Fame and Museum v. Gentile Productions, 134 F.3d 749 (6th Cir. 1998) [96]. .11 Stayart v. Yahoo! Inc., 623 F.3d 436 (7th Cir. 2010) [S-11]........................................................................... 11 In re Chippendales USA, 662 F.3d 1346 (Fed. Cir. 2010) [S-11]..................................................................11 In re Vertex Group, LLC, 89 U.S.P.Q.2d (BNA) 1964 (T.T.A.B. 2009) [S-13]........................................... 11 Lahoti v. VeriCheck, 586 F.3d 1190 (9th Cir. 2009) [S-14]............................................................................ 11 Wolf Appliance v. Viking Range Corp., 686 F. Supp. 2d 878 (W. D. Wis. 2010) [S-15]............................12

OWNERSHIP AND USE


Bell v. Streetwise Records, Ltd., 640 F. Supp. 575 (D. Mass. 1986) [105]....................................................13 Robi v. Reed, 173 F.3d 736 (9th Cir. 1999) [109]............................................................................................ 13 Estate of Francisco Coll-Monge v. Inner Peace Movement, 524 F.3d 1341 (D.C. Cir. 2008) [S-19]......13 Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir. 1991) [123].........13 Central Manufacturing Inc. v. Brett, 492 F.3d 876 (7th Cir. 2007) [S-21]................................................... 13 American Express Co. v. Goetz, 515 F.3d 156 (2d Cir. 2008) [S-26]...........................................................14 Nextel Communications, Inc. v. Motorola, Inc., 91 U.S.P.Q.2d (BNA) 1393 [S-27]................................. 14 Aycock Engineering, Inc. v. AirFlite, Inc., 90 U.S.P.Q.2d 1301 (Fed. Cir. 2009) [S-27]............................14 International Bancorp, LLC v. Socit des Bains de Mer et du Cercle des Etrangers Monaco, 329 F.3d 359 (4th Cir. 2003) [S-30].......................................................................................................................... 14 Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8 (D.C. Cir. 2008) [S-35]..............14 Blue Bell, Inc. v. Farah Manufacturing Co., 508 F.2d 1260 (5th Cir. 1975) [140]...................................... 15

United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918) [158]....................................................... 15 Thrifty Rent-a-Car System, Inc. v. Thrift Cars, Inc., 831 F.2d 1177 (1st Cir. 1987) [163]........................15 Dawn Donut Co. v. Harts Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959) [168]...................................... 15 Emergency One v. American Fire Eagle Engine, 332 F.3d 264 (4th Cir. 2003) [169]..............................15

REGISTRATION OF TRADEMARKS
WarnerVision Entertainment, Inc. v. Empire of Carolina, Inc., 101 F.3d 259 (2d Cir. 1996) [193].......16 Eastman Kodak Co. v. Bell & Howell Document Management Products Co., 994 F.2d 1569 (Fed. Cir. 1993) [198]........................................................................................................................................................... 16 In re Bad Frog Brewery, Inc., 1999 WL 149819 (T.T.A.B.) [204]................................................................ 16 In re White, 80 U.S.P.Q.2d 1654 (T.T.A.B. 2006) [224].................................................................................. 16 NutraSweet Co. v. K&S Foods, Inc., 4 U.S.P.Q.2d 1964 (T.T.A.B. 1997) [232]..........................................16 Persons Co., Ltd. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990) [243]........................................................ 16 First Niagara Insurance v. First Niagara Financial, 476 F.3d 876 (Fed. Cir. 2007) [246].......................... 17 In re Joint-Stock Company Baik, 80 U.S.P.Q.2d 1305 (T.T.A.B. 2006) [248]......................................... 17 In re Quadrillion Publishing, Ltd., 2000 WL 1195470 (Aug. 9, 2000) [260].............................................. 17 In re Howard Leight Industries, LLC, 80 U.S.P.Q.2d 1507 (T.T.A.B. 2006) [265]..................................... 17 In re Gibson Guitar Corp., 61 U.S.P.Q.2d 1948 (T.T.A.B. 2001) [271]....................................................... 17 Compagnie Gervais Danone v. Precision Formulations, LLC, 89 U.S.P.Q.2d 1251 (T.T.A.B. 2009) [S56].......................................................................................................................................................................... 17 Boston Red Sox Baseball Club Limited Partnership v. Sherman, 88 U.S.P.Q.2d 1581 (T.T.A.B. 2008) [S58].......................................................................................................................................................................... 18 In re Lebanese Arak Corp., 94 U.S.P.Q.2d 1215 (T.T.A.B. 2010) [S-63]......................................................18 Bayer AG v. Stamatios Mouratidis, 2010 WL 219893 (May 21, 2010) [S-71]............................................. 18 Hornby v. TJX Companies, Inc., 87 U.S.P.Q.2d 1411 (T.T.A.B. 2008) [S-75].............................................18 In re Richard M. Hoefflin, 97 U.S.P.Q.2d 1174 (T.T.A.B. 2010) [S-81]....................................................... 18 Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011) [S-82]...........................18 In re Spirits International, N.V., 563 F.3d 1347 (Fed. Cir. 2009) [S-90]...................................................... 19 Guantanamera Cigar Co. v. Corporacion Habanos S.A., 729 F. Supp. 2d 246 (D.D.C. 2010) [S-93]......19 In re Jonathan Drew, Inc., 97 U.S.P.Q.2d 1640 (T.T.A.B. 2011) [S-96]........................................................19 In re Joint Stock Company Baik, 80 U.S.P.Q.2d 1305 (T.T.A.B. 2007) [S-100]...................................... 19 In re Vertex Group LLC, 89 U.S.P.Q.2d 1694 (T.T.A.B. 2009) [S-101]....................................................... 19

LOSS OF TRADEMARK RIGHTS


Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) [274]................................................................. 20 E. I. du Pont de Nemours & Co. v. Yoshida International, Inc., 393 F. Supp. 502 (E.D.N.Y. 1975) [285] ............................................................................................................................................................................... 20 American Online Inc. v. AT&T Corp., 243 F.3d 812 (4th Cir. 2001) [291]................................................ 20 Harley Davidson v. Grottanelli, 164 F.3d 806 (2d Cir. 1999) [299]............................................................. 20 TE-TA-MA Truth Foundation v. World Church of the Creator, 297 F.3d 662 (7th Cir. 2002) [302]....20 Silverman v. CBS, Inc., 870 F.2d 40 (2d Cir. 1989) [306]...............................................................................21 ITC Ltd. v. Punchgini, 482 F.3d 135 (2d Cir. 2007) [311]............................................................................. 21 Clark & Freeman Corp. v. Heartland Co., Ltd., 811 F. Supp. 137 (S.D.N.Y. 1993) [316].........................21 Boston Duck Tours v. Super Duck Tour, 531 F.3d 1 (1st Cir. 2008) [S-105]............................................. 21 Welding Services, Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007) [S-107]................................................. 21 H-D Michigan v. Top Quality Services, 496 F.3d 755 (7th Cir. 2007) [S-108]........................................... 22 Millers Ale House v. Boynton Carolina Ale House, 745 F. Supp. 2d 1359 (S. D. Fla. 2010) [S-110].....22 Crash Dummy Movie v. Mattel, Inc., 601 F.3d 1387 (Fed. Cir. 2010) [S-112]........................................... 22 Specht v. Google, Inc., 758 F. Supp. 2d 570 (N. D. Ill. 2010) [S-114]..........................................................22 Grocery Outlet Inc. v. Albertsons Inc., 497 F.3d 949 (9th Cir. 2007) [S-116]........................................... 22 American Association for Justice v. American Trial Lawyers Association, 698 F. Supp. 2d 1129 (D. Minn. 2010) [119]................................................................................................................................................ 22

Evas Bridal Ltd. v. Halanick Enterprises, Inc., 639 F.3d 788 (7th Cir. 2011) [S-121]............................... 23 FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509 (9th Cir. 2010) [S-124]...................................... 23

INFRINGEMENT
E. & J. Gallo Winery v. Consorzio del Gallo Nero, 782 F. Supp. 457 (N. D. Cal. 1991) [336]................24 Banfi Products Corp. v. Kendall-Jackson Winery Ltd., 74 F. Supp. 2d 188 (E.D.N.Y. 1999) [343]........24 Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987) [363]...................................... 24 Blockbuster Entertainment Group v. Laylco, Inc., 869 F. Supp. 505 (E. D. Mich. 1994) [368]..............24 Steele v. Bulova Watch Co., 344 U.S. 280 (1952) [394].................................................................................. 25 McBee v. Delica, 417 F.3d 107 (1st Cir. 2005) [396]...................................................................................... 25 Mastercrafters Clock & Radio Co. v. Vacheron & ConstantinLe Coultre Watches, Inc., 221 F.2d 464 (2d Cir. 1995) [403]............................................................................................................................................. 25 Munsingwear, Inc. v. Jockey International, 31 U.S.P.Q.2d 1146 (D. Minn. 1994) [405]............................ 25 Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc., 952 F. Supp. 1084 (D.N.J. 1997) [408]........................................................................................................................................................... 25 Dreamwerks Productions, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998) [411]................................ 26 Attrezzi v. Maytag, 436 F.3d 32 (1st Cir. 2006) [414]..................................................................................... 26 Leelenau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007) [S-127]..........................26 Network Automation Inc. v. Advanced Systems Concepts Inc., 638 F.3d 1137 (9th Cir. 2011) [S-129] ............................................................................................................................................................................... 26 1-800 Contacts, Inc. v. Lens.com, Inc., 775 F. Supp. 2d 1151 (D. Utah 2010) [S-138].............................26 Sensient Technologies v. SensoryEffects, 613 F.3d 754 (8th Cir. 2010) [S-140]........................................ 26 Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009) [S-144]...................................................... 27 Inwood Laboratories, Inc., v. Ives Laboratories, Inc., 456 U.S. 844 (1982) [418]...................................... 27 Hard Rock Cafe Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143 (7th Cir. 1992) [423].....27 Georgia Pacific v. Myers, 621 F.3d 771 (7th Cir. 2010) [S-146].................................................................... 27 Georgia Pacific v. Von Drehle, 618 F.3d 441 (4th Cir. 2010) [S-146].......................................................... 27 Vulcan Golf, LLC v. Google Inc., 552 F. Supp. 2d 752 (N. D. Ill. 2008) [S-149].......................................27 Tiffany & Co. v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010) [S-152].................................................................... 28 Gucci America, Inc. v. Frontline Processing, 721 F. Supp. 2d 228 (S.D.N.Y. 2010) [S-157]....................28

STATUTORY DEFENSES TO INFRINGEMENT


Park N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985) [434].................................................... 29 United States Shoe Corp. v. Brown Group Inc., 740 F. Supp. 196 (S.D.N.Y.) [449]..................................29 Car-Freshner Corp. v. Johnson & Son Inc., 70 F.3d 267 (2d Cir. 1995) [453]............................................29 New Kids on the Block v. News America Publishing, 971 F.2d 302 (9th Cir. 1992) [462]...................... 29 In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) [S-162]............................................................................. 30 Pro Football, Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009) [169].................................................................. 30 Au-Tomotive Gold Inc. v. Volkswagen of America, Inc., 603 F.3d 1133 (9th Cir. 2010) [S-174]..........30

FALSE DESIGNATION OF ORIGIN AND TRADE DRESS


DC Comics v. Powers, 465 F. Supp. 843 (S.D.N.Y. 1978) [476].................................................................... 31 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) [481]................................................................. 31 Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000) [489]................................................. 31 Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778 (9th Cir. 2002) [496]......................................................... 31 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001) [498]...............................................32 Eco Manufacturing LLC v. Honeywell International Inc., 357 F.3d 649 (7th Cir. 2003) [504]...............32 Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062 (9th Cir. 2006) [506].............32 Gibson Guitar Corp. v. Paul Reed Smith Guitars, 423 F.3d 539 (6th Cir. 2005) [515].............................32 Best Cellars Inc. v. Grape Finds at Dupont, Inc., 90 F. Supp. 2d 431 (S.D.N.Y. 2000) [519]...................32

Best Cellars v. Wine Made Simple, 320 F. Supp. 2d 60 (S.D.N.Y. 2003) [531]............................................33 Conopco, Inc. v. May Department Stores Co., 46 F.3d 1556 (Fed. Cir. 1994) [535]................................. 33 McNeil-PPC, inc. v. Guardian Drug Co., 984 F. Supp. 1066 (E. D. Mich. 1997) [541]............................33 America Online v. LCGM, 46 F. Supp. 2d 444 (E. D. Va. 1998) [543]....................................................... 33 Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) [545].......................................... 33 Bretford Manufacturing, Inc. v. Smith System Manufacturing Corp., 419 F.3d 576 (7th Cir. 2005) [551] ............................................................................................................................................................................... 34 Hammerton Inc. v. Heisterman, 2008 WL 2004327 (D. Utah 2008) [S-178].............................................34 Autodesk, Inc. v. Dassault Systmes Solidworks Corporation, 685 F. Supp. 2d 1023 (N. D. Cal. 2009) [S-179]................................................................................................................................................................... 34 Specialized Seating, Inc. v. Greenwich Industries, L.P., 616 F.3d 722 (7th Cir. 2010) [S-181].................34 Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (2d Cir. 2010) [S-184]..................................................... 34 McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350 (3d Cir. 2007) [S-194].............34

ADVERTISING
Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968) [557].............................................................................. 36 August Storck K.G. v. Nabisco, Inc., 59 F.3d 616 (7th Cir. 1995) [564]..................................................... 36 Procter & Gamble Co. v. Amway Corp., 242 F.3d 539 (5th Cir. 2001) [571]............................................. 36 Coca-Cola Co. v. Tropicana Products, Inc., 690 F.2d 312 (2d Cir. 1982) [576]..........................................36 United Industries Corp. v. Clorox Co., 140 F.3d 1175 (8th Cir. 1998) [579].............................................. 37 Schick Manufacturing, Inc. v. Gillette Co., 373 F. Supp. 2d 273 (D. Conn. 2005) [580]........................... 37 Clorox Co. Puerto Rico v. Proctor & Gamble Commercial Co., 228 F.3d 24 (1st Cir. 2000) [583]........37 Johnson & Johnson Vision Care, Inc. v. Ciba Vision Corp., 348 F. Supp. 2d 165 (S.D.N.Y. 2004) [591] ............................................................................................................................................................................... 37 Polar Corp. v. Coca-Cola Co., 871 F. Supp. 1520 (D. Mass. 1994) [592]..................................................... 38 Coors Brewing Co. v. Anheuser-Busch Co., 802 F. Supp. 965 (S.D.N.Y. 1992) [593]...............................38 McNeil-PPC, Inc. v. Pfizer Inc., 351 F. Supp. 2d 226 (S.D.N.Y. 2005) [600].............................................. 38 Serbin v. Ziebart International Corp., 11 F.3d 1163 (3d Cir. 1993) [610]................................................... 38 Ortho Pharmaceutical Corp. v. Cosprophar, Inc., 32 F.3d 690 (2d Cir. 1994) [611].................................38 Autodesk, Inc. v. Dassault Systmes Solidworks Corp., 685 F. Supp. 2d 1001 (N. D. Cal. 2009) [S-197] ............................................................................................................................................................................... 38 Osmose, Inc. v. Viance, LLC, 612 F.3d 1298 (11th Cir. 2010) [S-199]........................................................ 38 Natural Answers v. SmithKline Beecham Corp., 529 F.3d 1325 (11th Cir. 2008) [S-203].......................39 Famous Horse, Inc. v. 5th Avenue Photo, Inc., 624 F.3d 106 (2d Cir. 2010) [S-203]...............................39

DILUTION
Ty Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002) [619]................................................................................ 40 Visa International Service Association v. JSL Corp., 610 F.3d 1088 (9th Cir. 2010) [S-217]...................40 Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) [S-220]............40 Starbucks Corp. v. Wolfes Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) [S-226]..............................40 V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382 (6th Cir. 2010) [S-235]................................................. 40 Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 U.S.P.Q.2d 1111 (T.T.A.B. 2010) [S-240]......................41 The Hershey Co. v. Art Van Furniture, Inc., 2008 WL 4724756 (E. D. Mich. 2008) [S-243].................. 41 Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 663 F.3d 1158 (9th Cir. 2011) [S-247]...........41

AUTHORS AND PERFORMERS RIGHTS


Gilliam v. American Broadcasting Companies, Inc., 538 F.2d 14 (2d Cir. 1976) [662]............................. 42 Antidote International Films v. Bloomsbury Publishing PLC, 467 F. Supp. 2d 394 (S.D.N.Y. 2006) [666]...................................................................................................................................................................... 42 King v. Innovation Books, 976 F.2d 824 (2d Cir. 1992) [669]...................................................................... 42

Miramax Films Corp. v. Columbia Pictures Enterprises, 996 F. Supp. 294 (S.D.N.Y. 1998) [674]..........42 Allen v. National Video, 610 F. Supp. 612 (S.D.N.Y. 1985) [677]................................................................. 42 Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) [684]......................................................................43 White v. Samsung Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992) [688]................................... 43 Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) [699].................................................................................. 43 OGrady v. Twentieth Century Fox, 2003 WL 24174616 (E. D. Tex. 2003) [707].................................... 43 ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003) [708]................................................... 43 Boston Athletic Association v. Sullivan, 867 F.2d 22 (1st Cir. 1989) [725]................................................. 44 WCVB-TV v. Boston Athletic Association, 926 F.2d 42 (1st Cir. 1991) [734]..........................................44 Facenda v. NFL, 542 F.3d 1007 (3d Cir. 2008) [S-253].................................................................................. 44 C.B.C. Distribution and Marketing, Inc. v. Major League Baseball, 505 F.3d 818 (8th Cir. 2007) [S-256] ............................................................................................................................................................................... 44 Board of Supervisors for Louisiana State University v. Smack Apparel, 550 F.3d 465 (5th Cir. 2008) [S257]........................................................................................................................................................................ 44 American Needle, Inc. v. National Football League, 130 S. Ct. 2201 (2010) [S-259]................................44

INTERNET DOMAIN NAMES


Sportys Farm L.L.C. v. Sportsmans Market, Inc., 202 F.3d 489 (2d Cir. 2000) [750].............................. 46 Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004) [757]...............................46 Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214 (4th Cir. 2002) [766]................................. 46 Cable News Network LP v. CNNews.com, 56 F. Appx 599 (4th Cir. 2003) [773]..................................46 Dial-A-Mattress Operating Corp. v Moakely, WIPO Arbitration and Mediation Center Case No. D2005-0471 (July 1, 2005) [781]....................................................................................................................... 46 Estate of Gorshin v. Martin, WIPO Arbitration and Mediation Center Case No. D2005-0803 (Oct. 31, 2005) [789]..................................................................................................................................................... 47 The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc. / Front and Center Entertainment, WIPO Arbitration and Mediation Center Case No. D2004-0947 (Jan. 20, 2005) [792] ............................................................................................................................................................................... 47 Deutsche Welle v. Diamondware Ltd., WIPO Arbitration and Mediation Center Case No. D2000-1202 (2001) [804].......................................................................................................................................................... 47 Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14 (1st Cir. 2001) [806]........................................47 Dluhos v. Strasberg, 321 F.3d 365 (3d Cir. 2003) [807]................................................................................. 47 Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617 (4th Cir. 2003) [810] ............................................................................................................................................................................... 47 Fagnelli Plumbing Co. v. Gillece Pluming & Heating, Inc., 2011 WL 693349 (W. D. Pa. 2011) [S-261]48 Southern Grouts & Mortars v. 3M Co., 575 F.3d 1235 (11th Cir. 2009) [S-267].......................................48 DSPT International, Inc. v. Nahum, 624 F.3d 1213 (9th Cir. 2010) [S-270].............................................. 48 Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research, 527 F.3d 1045 (10th Cir. 2008) [S-277]...................................................................................................................................... 48 Southern Co. v. Dauben, Inc., 324 F. Appx 309 (5th Cir. 2009) [S-281].................................................... 48 Fields for Senate v. Toddles Inc., WIPO Arbitration and Mediation Center Case No. D2006-1510 (Mar. 14, 2007) [S-287]....................................................................................................................................... 48 Hoteles Tursticos Unidos S.A. v. Jomar Technologies, WIPO Arbitration and Mediation Center Case No. D2008-0136 (Apr. 3, 2008) [S-291]........................................................................................................... 48 Southern California Regional Rail Authority v. Arkow, WIPO Case No. D2008-0430 (May 12, 2008) [S-293]................................................................................................................................................................... 49 First Baptist Church of Glenarden v. Jones, WIPO Arbitration and Mediation Center Case No. D2009-0022 (Feb. 26, 2009) [S-293]................................................................................................................ 49 Plan.net concept Spezialagentur fur Kommunication GmbH v. Yikilmaz, WIPO Arbitration and Mediation Center Case No. D2006-0082 (Mar. 24, 2006) [S-296]............................................................... 49

TRADEMARKS AS SPEECH
San Francisco Arts & Athletics, Inc. v. United States Olympic Committee, 483 U.S. 522 (1987) [817] 50 Kussbaum v. Steppenwolf Productions, Inc. [828]........................................................................................ 50 Playboy Enterprises, Inc. v. Welles [831]......................................................................................................... 50 Mutual of Omaha Insurance Co. v. Novak, 836 F.2d 397 (8th Cir. 1987) [838]........................................50 Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490 (2d Cir. 1989) [843] ............................................................................................................................................................................... 50 Anheuser-Busch, Inc. v. Balducci Publications [852]..................................................................................... 51 Yankee Publishing [856]..................................................................................................................................... 51 MGM-Pathe Communications [858]................................................................................................................ 51 Mattel, Inc. v. Universal Music International [859]........................................................................................ 51 Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003) [868]................................... 51 MasterCard International Inc. v. Nader 2000 Primary Committee, Inc., 70 U.S.P.Q.2d 1046 (S.D.N.Y. 2004) [885]........................................................................................................................................................... 51 Planned Parenthood Federation of America, Inc. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997) [889].52 Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998) [892]................................................................... 52 WHS Entertainment Ventures v. United Paperworkers International Union, 977 F. Supp. 946 (M. D. Tenn. 1998) [894]................................................................................................................................................ 52 People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001) [896]............52 Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) [904]............................................................................. 52 Toyota Motor Sales U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010) [S-300]..................................... 52 Anheuser-Busch v. VIP Products, 666 F. Supp. 2d 974 (E. D. Mo. 2008) [S-307]....................................53 Smith v. Wal-Mart Stores, 537 F. Supp. 2d 1302 (N. D. Ga. 2008) [S-308]................................................. 53 Parks v. LaFace Records, 329 F.3d 437 (6th Cir. 2003) [S-313].................................................................... 53 E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) [S-314].........53 Protectmarriage.com v. Courage Campaign, 680 F. Supp. 2d 1225 (E. D. Cal. 2010) [S-321].................53

REMEDIES
Nova Wines, Inc. v. Adler Fels Winery LLC, 467 F. Supp. 2d 965 (N. D. Cal. 2006) [912].....................54 Home Box Office v. Showtime, 832 F.2d 1311 (2d Cir. 1987)..................................................................... 54 Soltex Polymer Corp. v. Fortex Industries, Inc., 832 F.2d 1325 (2d Cir. 1987) [922]................................ 54 Perfect Fit Industries v. Acme Quilting Co., 646 F.2d 800 (2d Cir. 1981) [927]........................................ 54 Nikon, Inc. v. Ikon Corp., 987 F.2d 91 (2d Cir. 1993) [928]......................................................................... 54 Gucci America, Inc. v. Daffys, Inc., 354 F.3d 228 (3d Cir. 2003) [929]...................................................... 55 Taco Cabana International, Inc. v. Two Pesos, Inc., 932 F.2d 1113 (5th Cir. 1991) [934]........................ 55 Banjo Buddies, Inc. v. Renosky, 399 F.3d 168 (3d Cir. 2005) [937]..............................................................55 Ross Cosmetics Distribution Centers v. United States, 34 U.S.P.Q.2d 1758 (Ct. Intl Trade 1994) [988] ............................................................................................................................................................................... 55 K Mart Corp. v. Cartier, Inc., 486 U.S. 281 (1988) [992]............................................................................... 55 Bourdeau Brothers v. ITC, 444 F.3d 1317 (Fed. Cir. 2006) [996]................................................................ 55 North American Medical Corp. v. Axiom Worldwide, Inc., 552 F.3d 1211 (11th Cir. 2008) [S-325].....55 Nightingale Home Healthcare, Inc. v. Anodyne Therapy, LLC, 626 F.3d 958 (7th Cir. 2010) [S-328]. .55

WHAT IS A TRADEMARK?
Cheney Brothers v. Doris Silk Corp., 35 F.2d 279 (2d Cir. 1929) [3] Plaintiff was a producer of patterned silk fabrics. Each season, plaintiff produced a number of patterns, some of which would sell well on the market and some of which would not. Defendant copied plaintiff s well-received patterns and sold them at a discount, thereby undercutting plaintiff s prices. Plaintiff asked the court to enjoin defendant from reproducing and selling plaintiff s patterns. The court declined, explaining that it had no constitutional authority to create what amounted to a quasi-property right. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964) [5] Stiffel was the manufacturer of a pole lamp with a distinctive design. Although Stiffel had received design and utility patents for the lamp, those patents were found to be invalid. Sears copied the lamp and sold it at a lower price. Stiffel asked the Court to enjoin Sears from selling its copy of the lamp. Evidence showed the existence of some consumer confusion as to the origin of the lamps design. The court declined, finding that state laws concerning unfair competition could not be used to enlarge the scope of the protection granted by a patent. Bonito Boats v. Thunder Craft Boats, 489 U.S. 141 (1989) [9] Plaintiff was a manufacturer of boats. Defendant copied plaintiff s boathull design. Plaintiff asked the Court to enjoin defendant from producing copies of plaintiff s boat hull, relying on a Florida statute prohibiting the unauthorized copying of boat hulls. The Court declined, finding that the federal patent statute preempted the Florida statute. The Trade-Mark Cases, 100 U.S. 82 (1879) [13] The Court analyzed pre-Lanham Act trademark statutes and concluded that Congresss power to make laws concerning trademarks did not stem from its power to grant patents and copyrights. Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916) [21] The court found that trademarks are intended to protect the goodwill of a business. The main purpose of trademark protection, according to the court, is to prevent a business from passing off its own goods as those made by another. Stork Restaurant, Inc. v. Sahati, 166 F.2d 348 (9th Cir. 1948) [22] Appellant operated a New York nightclub known as The Stork Club. Appellants Stork Club was famous, having appeared in newspaper articles as well as a movie. Appellee operated a San Francisco nightclub with the same name.

Appellees club, however, was much smaller and less known than appellants club. Appellant asked the court to enjoin appellee from operating the San Francisco Stork Club. The court held than an injunction was appropriate, finding that appellee had diluted the goodwill associated with appellants Stork Club. The court found that neither (1) a disparity in the respective sizes of the clubs, nor (2) geographical distance, nor (3) the lack of actual loss of business by appellant could insulate appellee from liability. Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947) [27] Champion was a manufacturer of spark plugs. Sanders reconditioned and resold used Champion spark plugs. Sanderss packaging indicated that the spark plugs were reconditioned. Champion asked the Court to enjoin Sanders from selling the reconditioned spark plugs, arguing that Sanders was infringing Champions trademark. The Court declined, finding that trademark law would only prohibit other businesses from passing off their own goods as Champions. Since Sanders was selling genuine, albeit secondhand, Champion spark plugs, no trademark infringement had occurred. Associated Press v. All Headlines News Corp., 608 F. Supp. 2d 454 (S.D.N.Y. 2009) [S-6] The court reaffirmed the existence of a cause of action for misappropriation of hot news, even if the misappropriated news is obtained through Internet searches of plaintiff s website. Barclays Capital, Inc. v. Theflyonthewall.com, 2011 WL 2437554 (2d Cir. 2011) [S-7] Plaintiffs were financial firms that regularly issued recommendations concerning the stock market. Defendant 9

was a news aggregator service that gathered and republished plaintiffs recommendations. Plaintiffs asked the court to stop defendant from republishing plaintiffs recommendations. The court ruled for defendant, finding the hot news rule to be inapplicable. Defendant was not free-riding on plaintiffs recommendations because defendant was merely reporting that plaintiffs had made such recommendations, not selling those recommendations as defendants own. Custom Manufacturing v. Midway Services, Inc., 508 F.3d 641 (11th Cir. 2007) [S-10] Custom was a designer of water meters. Midway managed apartment buildings. Midway hired Custom to design water meters for Midways apartment buildings. Partway through the design process, Midway fired Custom and hired another firm to complete the design. The completed water meters bore Customs trademark on internal components. Custom accused Midway of infringing its trademark. The court ruled for Midway, finding the trademark not to be readily visible. The court further found that individuals likely to see the trademark were unlikely to be purchasers of water meters. Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938) [44] National Biscuit produced a breakfast cereal known as shredded wheat. Kellogg produced a similar cereal and called it by the same name. National asked the Court to enjoin Kellogg from producing shredded wheat, arguing that Kellogg was infringing Nationals trademark for the name and shape of the cereal. The Court declined, finding the name and shape of shredded wheat to have entered the public domain upon the expiration of a patent that had covered

the cereal. Kellogg was therefore free to produce shredded wheat so long as it refrained from practices that might create consumer confusion as to the source of the cereal. Coca-Cola Co. v. Koke Co. of America, 254 U.S. 143 (1920) [49] Koke produced a beverage that resembled Coca-Cola. Coca-Cola asked the Court to enjoin Koke from making its lookalike product. Koke argued that Coca-Colas trademark was invalid because it deceived consumers as to the ingredients of the drink. (The original formula for Coke contained cocaine, but cocaine had been removed from the formula by the time of the lawsuit.) The Court found that the term Coca-Cola had acquired secondary meaning notwithstanding any alleged deceptiveness concerning the ingredients list. Koke had therefore infringed Coca-Colas trademark. Peaceable Planet, Inc. v. Ty, Inc. 362 F.3d 986 (7th Cir. 2004) [52] Peaceable Planet manufactured a plush-toy camel, which was named Niles. Sometime after Peaceable Planets camel appeared on the market, Ty, the maker of Beanie Babies plush toys, began making its own version of Niles the camel. Peaceable Planet sued Ty for trademark infringement, arguing that Ty was unlawfully using the name Niles in connection with plush-toy camels. Ty argued that Niles could not be a trademark by virtue of being a name. The Court found that the usual reasons for prohibiting the use of names as trademarks did not apply, as Niles was being used in conjunction with a toy camel, not with an individual who might go into business for himself. Ty had therefore infringed the Niles trademark.

Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) [63] Qualitex manufactured pads for use in dry-cleaning equipment. Qualitexs pads had a distinctive green-gold color. Jacobson, a competitor to Qualitex, made dry-cleaning pads with the same color. Qualitex sued Jacobson for trademark infringement, arguing that Jacboson had infringed Qualitexs trademark for the green-gold color. Jacobson argued in response that a color in itself cannot act as a trademark. The Court found that color, like coined words, can indicate the source of a product. The Court rejected Jacobsons arguments concerning (1) color depletion and (2) potential interference with function, noting that existing legal doctrines could deal with those problems. Jacobson had therefore infringed Qualitexs trademark. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) [78] The court intorduced the Abercrombie taxomony of trademark candidates, which consists of (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful terms. In re Application of Quik-Print Copy Shops, Inc., 616 F.2d 523 (C.C.P.A. 1980) [82] Quik-Print sought to register QuikPrint as a trademark for its same-day printing service. The Patent and Trademark Office refused to register the mark because it was merely descriptive. The court affirmed the rejection, noting that Quik-Print immediately called to mind the idea of a fast printing service.

10

American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85 (Mass. 1899) [87] Plaintiff was a watch company that manufactured Waltham Watches. Plaintiff had originally used the term Waltham only to designate the geographic origin of its watches, but the term Waltham had come to be associated with plaintiff s watches through longstanding use. Defendant was a competing watch company that also placed the term Waltham on its watch to indicate geographic origin. Plaintiff asked the court to enjoin defendant from displaying the term Waltham on its watches without some additional statement to distinguish defendants watches from plaintiff s. Defendant argued that plaintiff should not be allowed to prevent competitors from using Waltham for their own purposes. The court ruled for plaintiff, finding that defendant should not be allowed to interfere with the goodwill already attached to the Waltham label. Rock and Roll Hall of Fame and Museum v. Gentile Productions, 134 F.3d 749 (6th Cir. 1998) [96] Gentile was a photographer whose works included a poster featuring the Rock and Roll Hall of Fame and Museum. The Museum asked the court to enjoin Gentile from selling the poster, arguing that Gentile was infringing the trademark inhering in the architecture of the building itself. The court ruled for Gentile, finding that the Museums architecture, no matter how distinctive, did not serve as a source identifier for a separate good or service. The dissent noted that reproducing the design of the Museum in a two-dimensional photograph was no different from reproducing the distinctive shape of a Coke bottle in a two-dimensional medium.

Stayart v. Yahoo! Inc., 623 F.3d 436 (7th Cir. 2010) [S-11] Appellant was an animal rights activits. Appellee was a search engine. Appellant searched for her own name using appellants search engine and discovered that the results included pornography. Appellant accused appellee of false endorsement. The court ruled for appellee, finding appellant to have no standing because appellant suffered no harm to commercial activity. In re Chippendales USA, 662 F.3d 1346 (Fed. Cir. 2010) [S-11] Chippendales was an exotic male dancing group. Chippendales sought to register the Cuffs and Collar trademark. The court found the mark not to be registrable because it lacked inherent distinctiveness. The court found the Cuffs and Collar mark to resemble the trademark associated with Playboy. In re Vertex Group, LLC, 89 U.S.P.Q.2d (BNA) 1964 (T.T.A.B. 2009) [S-13] Vertex sought to register the sound of an alarm as a trademark. The court found the sound to be unregistrable because it did not serve to identify Vertex as the manufacturer of the alarm. Lahoti v. VeriCheck, 586 F.3d 1190 (9th Cir. 2009) [S-14] Appellee owned the trademark VeriCheck, which was used in conjunction with checking services. Appellant raised an issue as to whether VeriCheck was descriptive or suggestive. The court found that in determining whether a mark is descriptive, one must ask whether the mark immediately conveys information about the underlying product or service.

11

Wolf Appliance v. Viking Range Corp., 686 F. Supp. 2d 878 (W. D. Wis. 2010) [S-15] Wolf was a manufacturer of highend kitchen ranges. Wolf s ranges were equipped with red knobs, for which Wolf held a trademark registration. Viking was a competing manufacturer of high-

end kitchen ranges. Viking offered red knobs as a styling option on its ranges. Wolf accused Viking of infringing its trademark for red knobs. The court ruled for Wolf, applying a six-factor test to determine whether Viking was unfairly benefiting from Wolf s design element.

12

OWNERSHIP AND USE


Bell v. Streetwise Records, Ltd., 640 F. Supp. 575 (D. Mass. 1986) [105] Plaintiffs were the members of the band New Edition, which was essentially a clone of the Jackson Five. Plaintiffs formed New Edition under the guidance of their manager, Maurice Starr. Starr secured for plaintiffs a recording contract with defendant record company, under which plaintiffs first album was produced. After New Edition became a major success, plaintiffs fired Starr and opted for a recording contract with a different company. Plaintiffs asked the court to find that they owned the right to perform under the name New Edition. The court ruled in their favor, finding that plaintiffs had established priority of use and that, alternatively, plaintiffs owned the New Edition mark because the name of the band was associated with plaintiffs identities. Robi v. Reed, 173 F.3d 736 (9th Cir. 1999) [109] Plaintiff Martha Robi was the widow of Paul Robi, a member of the band The Platters. Plaintiff claimed to have inherited ownership of the bands name upon her husbands death. Reed was a member of The Platters, having founded the band and continually managed it ever since. Reed also claimed ownership of the bands name. The court ruled for Reed, finding that he had a right to use the name by virtue of having control of the bands product. 13 Estate of Francisco Coll-Monge v. Inner Peace Movement, 524 F.3d 1341 (D.C. Cir. 2008) [S-19] The court clarified that the related companies doctrine covers any individual or entity that controls the use of a trademark. The court found that formal corporate control of the trademark user was not a prerequisite for asserting the doctrine. Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir. 1991) [123] Appellant was a clown performing under the name Bozo the Clown. Appellee operated a restaurant called Bozos. Appellant opposed appellees registration of the Bozos trademark, arguing that appellees use of the mark in connection with a single restaurant was not use in commerce under the Lanham Act. The court ruled for appellee, finding that use in commerce covers all commerce that can be regulated by Congress. The court rejected appellants argument that appellee should bear the burden of proving that some fraction of its customers came from outside the state. Central Manufacturing Inc. v. Brett, 492 F.3d 876 (7th Cir. 2007) [S-21] Brett sold baseball bats under the Stealth trademark, with the first recorded sale taking place in 1999. Central had evidently registered the Stealth

trademark for use in conjunction with baseballs. Central accused Brett of trademark infringement, arguing that baseballs and bats were related goods. The court ruled for Brett, finding that Central had not produced sufficient evidence to show it had actually sold baseballs under the Stealth trademark. American Express Co. v. Goetz, 515 F.3d 156 (2d Cir. 2008) [S-26] Goetz was a consultant for an advertising agency. Goetz devised the slogan My Life, My Card and suggested the slogan to American Express. American Express initially declined but adopted the slogan after consulting a different advertising agency. Goetz accused American Express of trademark infringement, arguing that My Life, My Card was his trademark. The court ruled for American Express, finding that My Life, My Card was not a trademark because it did not signify a connection with any particular product. Nextel Communications, Inc. v. Motorola, Inc., 91 U.S.P.Q.2d (BNA) 1393 [S-27] The Board found a cell-phone ringtone was not a trademark because the ringtone did not signify a connection with the cell phones manufacturer. Aycock Engineering, Inc. v. AirFlite, Inc., 90 U.S.P.Q.2d 1301 (Fed. Cir. 2009) [S-27] Appellant had registered AirFlite as a trademark for use in connection with an air taxi service. Appellant had entered into contracts with air taxi operators and had advertised its services, though no flights had been completed. Appellee challenged the trademark, arguing that appellant had not actually used it in commerce. The court ruled for appellee, finding that appellants activities were merely preparation for use rather 14

than use itself. The dissent argued that appellants setting-up of the service was enough to support a finding of use in commerce. International Bancorp, LLC v. Socit des Bains de Mer et du Cercle des Etrangers Monaco, 329 F.3d 359 (4th Cir. 2003) [S-30] Appellee was the owner of the Casino de Monte Carlo in Monaco. Despite having operated the casino since 1863, appellee had not registered a trademark for the casino in the United States. Appellant operated numerous gambling websites, many of which displayed images of appellees casino. Appellee sued appellant for trademark infringement. The court ruled for appellee. The court found that American citizens traveled to the Casino de Monte Carlo, thus creating foreign commerce within the reach of the Lanham Act. The dissent argued that appellee was not entitled to relief because appellee had never actually used the mark in commerce within the United States. Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8 (D.C. Cir. 2008) [S-35] Appellant was a Danish company that sold jeans under the label Jack & Jones. Appellant had extensive operations outside the United States. Seeking to enter the American market, appellant filed for registration of a Jack & Jones trademark in December of 2004. The Patent and Trademark Office, however, refused registration because appellee had for an intent to use registeration of the same mark in January of 2004. Appellant challenged appellees registration of the mark, arguing that its actual use of the mark predated appellees registration. The court found appellant to have stated a valid claim. The court held that appellants alleged marketing activi-

ties in the United States, combined with alleged public recognition of appellants brand, was sufficient to form a complaint. Blue Bell, Inc. v. Farah Manufacturing Co., 508 F.2d 1260 (5th Cir. 1975) [140] Blue Bell and Farah were competing clothing manufacturers that had independently conceived of clothing lines named Time Out. Blue Bell, in an apparent act of token use, attached Time Out tags to clothing sold under an existing line, shipping the clothing to customers who had ordered clothing from that line. Farah shipped articles of Time Out clothing to its regional sales managers. The court found that neither Blue Bells token use nor Farahs internal shipments were sufficient to establish priority of use. Rather, actual shipment of goods to customers determined priority. The court ruled in favor of Blue Bell, finding Blue Bells Time Out clothing to have reached customers first. United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918) [158] Petitioner sold medicinal products under the name Rex. Petitioners product originated in Massachusetts, but its business gradually expanded to other states. Respondent also sold medicinal products under the name Rex. Respondents products had been invented Kentucky, before petitioners Rex products became known in that state. When petitioners business expanded into Kentucky, petitioner argued that it was entitled to exclusive use of the Rex trademark in Kentucky by virtue of its earlier initial use in Massachusetts. The court ruled for respondent, finding that petitioners earlier use

of the mark in a different state did not give petitioner a right to interfere with respondents established used of th emark in Kentucky. Thrifty Rent-a-Car System, Inc. v. Thrift Cars, Inc., 831 F.2d 1177 (1st Cir. 1987) [163] Thrifty Rent-a-Car was a rental-car provider founded in Oklahoma. Thriftys business gradually expanded to other states. Thrift Cars was a rental-car business operating in East Taunton, Massachusetts. When Thriftys expansion reached Massachusetts, Thrifty argued that it was entitled to exclusive use of the Thrifty mark in East Taunton. The court found Thrift to be protected by the Lanham Acts limited area exception by virtue of having operated continually in East Taunton. Dawn Donut Co. v. Harts Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959) [168] Dawn Donut manufactured and sold donut mix under the Dawn brand. Harts Food Stores sold ready-to-eat donuts under its own Dawn brand. Dawn asked the court to enjoin Harts from selling donuts under the Dawn trademark. The court declined, finding little likelihood of consumer confusion because donut mix and prepared donuts occupied distinct markets. The court noted, however, that either partys expansion into the others market could create a trademark dispute. Emergency One v. American Fire Eagle Engine, 332 F.3d 264 (4th Cir. 2003) [169] The court held that registration of a mark creates a presumption that the registrant is entitled to nationwide use of the mark.

15

REGISTRATION OF TRADEMARKS
WarnerVision Entertainment, Inc. v. Empire of Carolina, Inc., 101 F.3d 259 (2d Cir. 1996) [193] WarnerVision filed an intent-to-use registration for the Rear Wheels trademark. While the registration was pending, Empire to use Rear Wheels as a brand for its own products. Empire asked the court to enjoin WarnerVision from using the Rear Wheels mark, arguing that Empire owned the mark by virtue of having been the first to use the mark in commerce. The court declined, finding that an injunction against the use of the mark would prevent WarnerVision from undertaking the use necessary to perfect its registration. Eastman Kodak Co. v. Bell & Howell Document Management Products Co., 994 F.2d 1569 (Fed. Cir. 1993) [198] Bell & Howell sought to register several model numbers as trademarks. Kodak opposed the registration, arguing that the model numbers were merely descriptive. The court allowed the registration, finding that registration should be allowed where the existence of secondary meaning cannot be determined until actual use of the mark has begun. In re Bad Frog Brewery, Inc., 1999 WL 149819 (T.T.A.B.) [204] Bad Frog Brewery filed for a registration for a trademark consisting of a frog making the middle-finger gesture. The 16 Board approved the trademark, finding it not to be too offensive. In re White, 80 U.S.P.Q.2d 1654 (T.T.A.B. 2006) [224] White sought to register Mohawk as a trademark for cigarettes. The Board refused to register the mark because it falsely suggested a connection with the Mohawk tribe of Native Americans. White argued that Mohawk did not always refer to the tribe itself. The Board, however, found that the alternative uses of the term were nonetheless connected to Mohawk culture. NutraSweet Co. v. K&S Foods, Inc., 4 U.S.P.Q.2d 1964 (T.T.A.B. 1997) [232] NutraSweet manufactured and sold artificial sweeteners under the NutraSweet trademark. K&S sought to register Nutra Salt as a trademark for salt. NutraSweet opposed the registration, arguing that K&Ss proposed trademark would create consumer confusion as to the distinction between NutraSweets products and K&Ss. The Board ruled for NutraSweet, finding that K&Ss use of the prefix Nutra may lead to consumers to believe that Nutra Salt products were produced by NutraSweet. Persons Co., Ltd. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990) [243] Persons was a Japanese clothing retailer that sold clothing in Japan under

the Persons label. Christman, having visited a Persons store during a trip to Japan, registered the Persons trademark in the United States and founded what was essentially a clone of the Japanese Persons clothing line. When Persons discovered Christmans business, it sought the cancellation of Christmans trademark. The court ruled for Christman, finding that Christman was entitled to use the mark by virtue of having been the first to register and to use the mark in the United States. The court rejected Persons argument that Christmans registration should be cancelled because of his bad faith in copying Persons business. First Niagara Insurance v. First Niagara Financial, 476 F.3d 876 (Fed. Cir. 2007) [246] Plaintiff was a Canadian insurance company operating under the name First Niagara, which had appeared on plaintiff s advertisements in the United States. Plaintiff sought to prevent defendant American company from registering First Niagara as a trademark in the United States. The court found that plaintiff was entitled to oppose the registration by virtue of having used the First Niagara mark in the United States. In re Joint-Stock Company Baik, 80 U.S.P.Q.2d 1305 (T.T.A.B. 2006) [248] Baik was a Russian company selling Baikalskaya brand vodka. Baik sought to register Baikalskaya as a trademark. The Board Baikalskaya not to be registrable because it referred primarily to a geographical location. The Board noted that Baikalskaya literally means from Baikal and that most American vodka buyers would recognize the term as a reference to Lake Baikal. The Board further found that the addition of the

skaya suffix did not undermine the geographic association. In re Quadrillion Publishing, Ltd., 2000 WL 1195470 (Aug. 9, 2000) [260] Quadrillion sought to register Bramley as a trademark. The Board found Bramley not to be registrable by virtue of being primarily a surname. Although Bramley had some meanings that were not surnames, the Board found the alternative meanings to be insufficient to show that Bramley was not primarily a surname. In re Howard Leight Industries, LLC, 80 U.S.P.Q.2d 1507 (T.T.A.B. 2006) [265] Applicant sought to register a trademark for the distinctive shape of its earplugs. The Board refused registration, finding the shape to be a functional aspect of the product that had once been covered by a patent. In re Gibson Guitar Corp., 61 U.S.P.Q.2d 1948 (T.T.A.B. 2001) [271] Gibson sought to register the shape of a guitar as a trademark. The Board refused registration, finding the shape to affect the sound of the guitar. The Board pointed to Gibsons advertising materials, which claimed that guitars with its distinctive shape had a less muddy sound than other guitars. The Board found better sound to establish the shape as functional even though better sound is not readily quantifiable. Compagnie Gervais Danone v. Precision Formulations, LLC, 89 U.S.P.Q.2d 1251 (T.T.A.B. 2009) [S-56] The court clarified the use of international filing dates in establishing priority.

17

Boston Red Sox Baseball Club Limited Partnership v. Sherman, 88 U.S.P.Q.2d 1581 (T.T.A.B. 2008) [S-58] Sherman sought to register Sex Rod as a trademark for use in connection with clothing. The Red Sox opposed the registration, arguing that Sex Rod was vulgar and would disparage the baseball team. The Board ruled for the Red Sox. The Board found Sex Rod to be plainly vulgar by virtue of being a sexual reference. The Board further found that the intentional similarity of the Sex Rod mark to the Red Sox mark would likely disparage the Red Sox. In re Lebanese Arak Corp., 94 U.S.P.Q.2d 1215 (T.T.A.B. 2010) [S-63] Applicant sought to register Khoran as a trademark to be used in connection with wine. Khoran is an Armenian term meaning altar. The Patent and Trademark Office refused registration, finding that use of the term Khoran in connection with alcohol was likely to disparage Muslims. The Board affirmed, finding that most American consumers would be unlikely to realize that Khoran was an Armenian term rather than a reference to the Koran. The dissent argued that most American consumers would realize that Khoran was a designation of the wines origin as opposed to a reference to the Koran. The dissent further argued that the Islamic prohibition of alcoholic beverages would reduce the likelihood that Muslims would notice the mark and take offense. Bayer AG v. Stamatios Mouratidis, 2010 WL 219893 (May 21, 2010) [S-71] Mouratidis sought to register Organic Aspirin as a trademark for a nutritional supplement, which did not actually contain aspirin. Bayer opposed the registration, arguing that the mark

was misdescriptive and deceptive. The Board ruled for Bayer, finding that Organic Aspirin would likely lead consumers to believe the product actually contained aspirin. The Board further found that use of the term Aspirin would likely induce consumers to buy the product. Hornby v. TJX Companies, Inc., 87 U.S.P.Q.2d 1411 (T.T.A.B. 2008) [S-75] Hornby was a model widely known by the name Twiggy, having become prominent during the 1960s. TJX sold a line of childrens clothing under its Twiggy label. Hornby challenged TJXs registration for the Twiggy mark, arguing that the mark falsely suggested a connection to her. The court ruled for Hornby, finding Hornby to have maintained public recognition of her name through media appearances. The court further found that buyers of childrens clothing were likely to be parents who had grown up during the 1960s and who were therefore likely to recognize Twiggy as a reference to Hornby. In re Richard M. Hoefflin, 97 U.S.P.Q.2d 1174 (T.T.A.B. 2010) [S-81] Hoefflin sought to register Obama Pajama and Obama Bahama Pajamas as trademarks for pajamas. The Board refused to register the mark because Hoefflin had failed to obtain President Obamas consent to use the trademark. The court rejected Hoefflins argument that Obama did not refer to any particular person, finding that Obama would immediately evoke a connection with the president. Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011) [S-82] Citigroup argued that Capital City Banks use of the phrase City Bank was likely to cause confusion with 18

Citibank. The court ruled for Capital, finding the difference between Citi and City sufficient to differentiate the banks from a consumers perspective. In re Spirits International, N.V., 563 F.3d 1347 (Fed. Cir. 2009) [S-90] Spirits International sought to register Moskovskaya as a trademark for vodka. In Russian, Moskovskaya means from Moscow. The Patent and Trademark Office refused registration, finding the mark to be deceptive because Spirits had conceded that Moskovskaya vodka was not made in Moscow. The court announced that the test for deceptiveness was whether a substantial portion of the target audience, as opposed to consumers in general, would be misled by the mark. Guantanamera Cigar Co. v. Corporacion Habanos S.A., 729 F. Supp. 2d 246 (D.D.C. 2010) [S-93] Guantanamera was a cigar seller based in Florida. Guantanamera sold cigars under the Guantanamera brand. Habanos was a Cuban cigar seller. When Guantanamera tried to register Guantanamera as a trademark, Habanos opposed the registration, arguing that consumers would be deceived into thinking that the cigars were made in Guantanamo, Cuba. The court found a lack of evidence as to whether a substantial population of the target audience would in fact be deceived. The court remanded the case to the Trademark Trial and Appeal Board for additional findings.

In re Jonathan Drew, Inc., 97 U.S.P.Q.2d 1640 (T.T.A.B. 2011) [S-96] Drew sought to register Kuba Kuba as a trademark for cigars. The Patent and Trademark Office refused registration, finding the mark to be deceptive. The Board affirmed, finding Kuba to be an obvious reference to Cuba. The Board rejected Drews argument that Kuba could have other meanings. The Board found that the meaning of the term is to be determined from the perspective of a consumer. In re Joint Stock Company Baik, 80 U.S.P.Q.2d 1305 (T.T.A.B. 2007) [S100] The concurrence argued that look and feel should be a factor in determining whether a proposed trademark should be denied registration for being primarily a surname. The concurrence further argued that trademarks that resemble surnames, but which are technically not surnames, should be denied registration in order to ensure that individuals can always use their own surnames for their businesses. In re Vertex Group LLC, 89 U.S.P.Q.2d 1694 (T.T.A.B. 2009) [S101] Vertex sought to register the sound of an alarm as a trademark. The Board found the sound to be unregistrable because it was a functional aspect of the product. The Board found that Vertex had phrased its application broadly enough that allowing for the trademark would deprive Vertexs competitors of sounds that could be used in alarms.

19

LOSS OF TRADEMARK RIGHTS


Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) [274] Bayer sold aspirin under the Aspirin trademark. Bayer asked the court to enjoin United Drug from selling the drug under the same name. The court found that aspirin had become a generic term. The court noted that Bayer had consistently referred to the drug only as aspirin, supplying no generic name. E. I. du Pont de Nemours & Co. v. Yoshida International, Inc., 393 F. Supp. 502 (E.D.N.Y. 1975) [285] Du Pont produced non-stick coating under the trademark Teflon. Yoshida produced zippers under the Eflon brand. Du Pont sued Yoshida, arguing that Yoshidas Eflon brand infringed Du Ponts Teflon trademark. Yoshida argued that Teflon had become a generic term. Both parties produced surveys to support their respective positions. The court found the survey results to be ambiguous and ruled for Du Pont. The court noted that the party asserting genericism bears the burden of proving that assertion. American Online Inc. v. AT&T Corp., 243 F.3d 812 (4th Cir. 2001) [291] AOL claimed to own trademarks for the terms Buddy List, You Have Mail, and IM. AOL argued that AT&T had infringed these trademarks by using simi20 lar terms in connection with AT&Ts Internet services. AT&T argued that none of the three terms could be a trademark because all three were generic. The court found You Have Mail and IM to be generic because they referred to aspects common to online service. The court, however, found the existence of a factual issue as to whether Buddy List had become associated with AOLs services in particular. The dissent argued that AOLs phrase Youve Got Mail should be allowed to be a trademark. Harley Davidson v. Grottanelli, 164 F.3d 806 (2d Cir. 1999) [299] Harley Davidson sued Grottanelli for trademark infringement, asking the court to stop Grottanelli from using the term hog in connection with motorcycles. The court ruled for Grottanelli, finding that hog referred to large motorcycles in general. The court found that Harley Davidson could not withdraw hog from the public domain so long as the term retained some generic meaning. TE-TA-MA Truth Foundation v. World Church of the Creator, 297 F.3d 662 (7th Cir. 2002) [302] The court found World Church of the Creator to be a descriptive, rather than generic, term. The court found the term to refer specifically to the appellee, not to monotheistic religions in general.

Silverman v. CBS, Inc., 870 F.2d 40 (2d Cir. 1989) [306] CBS owned the trademark for the Amos n Andy characters, but the characters had not been featured in any entertainment programs for more than twenty years. Silverman sought to produce a Broadway musical featuring Amos n Andy. CBS asked the court to enjoin Silverman from using the characters. Silverman argued that CBS had abandoned the trademark for the characters through its long period of non-use. The court ruled for Silverman, finding that abandonment consisted of a lack of intent to resume use of a mark within the foreseeable future. The court further found that a trademark owner cannot overcome a finding of abandonment simply by alleging that it may resume use of the mark at some point in the indefinite future. ITC Ltd. v. Punchgini, 482 F.3d 135 (2d Cir. 2007) [311] ITC operated an Indiana restaurant named Bukhara in New York City, but the restaurant eventually closed. Punchgini then opened what was essentially a clone of ITCs Bukhara restaurant, calling it the Bukhara Grill. ITC asked the court to stop Punchgini from operating the Bukhara Grill, arguing that Punchgini was infringing ITCs trademark for the term Bukhara. The court declined, finding that ITC had abandoned the mark through non-use. Although ITC had plans to open Bukhara restaurants around the world, the court found that ITC had failed to prove concrete intent to open a Bukhara restaurant in the United States.

Clark & Freeman Corp. v. Heartland Co., Ltd., 811 F. Supp. 137 (S.D.N.Y. 1993) [316] Defendant had sold clothing under the Heartland label since 1985. Plaintiff had sold mens shoes and boots under its own Heartland label since 1986. Plaintiff decided to expand its business to include clothing, which it planned to sell under the Heartland label. To this end, plaintiff purchased from Sears, Roebuck & Co. a Heartland trademark that Sears had used in connection with womens boots since 1983. Plaintiff then asserted the mark against defendant, arguing that Searss prior use of the mark gave plaintiff priority. The court ruled for defendants, finding plaintiff to have acquired the mark through assignment in gross. The court found that Searss womens boots were not sufficiently similar to plaintiff s clothing line to allow for a transfer of goodwill. Boston Duck Tours v. Super Duck Tour, 531 F.3d 1 (1st Cir. 2008) [S-105] Appellant and appellee were competing providers of amphibious sightseeing tours. Appellant accused appellee of trademark infringement, arguing that appellees use of the term duck tour would confuse consumers. Appellee argued that duck tour was a generic term. The court ruled for appellee, finding no adequate alternative to duck tour for describing the types of tours offered by the parties. Welding Services, Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007) [S-107] Welding Services trademark for Welding Services, Inc. had been found to be generic. Welding Services argued, however, that the abbreviation of its name, WSI, was nonetheless independently protectable as a trademark. The

21

court disagreed, finding that Welding Services had been using WSI as a reference to the generic name rather than a trademark itself. H-D Michigan v. Top Quality Services, 496 F.3d 755 (7th Cir. 2007) [S-108] Plaintiff was a corporate affiliate of the Harley-Davidson motorcycle company. Defendant was a motorcycle club. Defendant organized a cruise for motorcycle enthusiasts, calling the event Hogs on the High Seas and seeking to register the name as a trademark. Plaintiff opposed defendants trademark registration. The court ruled for plaintiff, finding the term Hog not to be generic with respect to motorcycle clubs. Millers Ale House v. Boynton Carolina Ale House, 745 F. Supp. 2d 1359 (S. D. Fla. 2010) [S-110] Millers Ale House had tried to register Ale House as a trademark. That registration failed when the Patent and Trademark Office found the term to be generic. Miller subsequently accused Boynton of infringing the Ale House trademark, arguing that Ale House had become non-generic through increased recognition of Millers businesses. The court ruled for Boynton, finding that Miller did not produce sufficient evidence to show that Ale House had become associated with Millers in particular. Crash Dummy Movie v. Mattel, Inc., 601 F.3d 1387 (Fed. Cir. 2010) [S-112] Defendant registered Crash Dummies as a trademark for toys. The registration eventually lapsed because of nonuse. Plaintiff subsequently sought to register the Crash Dummies for its own purposes. Defendant opposed plaintiff s registration, arguing that defendant had not actually abandoned 22

the mark. The court ruled for defendant, finding defendants evidence to show that it was actively developing a line of Crash Dummies toys. Specht v. Google, Inc., 758 F. Supp. 2d 570 (N. D. Ill. 2010) [S-114] Google developed and distributed the Android operating system for mobile phones. Specht had registered Android Data as a trademark for a software business, though the business had been defunct for several years. Spech argued that the trademark had not been abandoned because it had been sold to another party. The court, however, found that abandonment had taken place because the buyer took no action to revive the business for three years after the purchase. Grocery Outlet Inc. v. Albertsons Inc., 497 F.3d 949 (9th Cir. 2007) [S116] Members of the court disagreed as to whether the standard of proof for abandonment was preponderance of the evidence or clear and convincing evidence. American Association for Justice v. American Trial Lawyers Association, 698 F. Supp. 2d 1129 (D. Minn. 2010) [119] Plaintiff was a lawyers organization formerly called The Trial Lawyers of America. After plaintiff changed its name, defendant began using plaintiff s old name. Plaintiff asked the court to stop defendant from using the name. Defendant argued that plaintiff had abandoned the name. The court ruled for plaintiff, finding that plaintiff had not abandoned the mark. The court noted that plaintiff continued to notify the public of its former name after the name change.

Evas Bridal Ltd. v. Halanick Enterprises, Inc., 639 F.3d 788 (7th Cir. 2011) [S-121] Plaintiff established a wedding business under the name Evas Bridal. Plaintiff licensed the Evas Bridal to defendant, which operated its own wedding business. When the license expired, defendant continued to use the Evas Bridal name. Plaintiff asked the court to enjoin defendant from using the name. The court ruled for defendant, finding plaintiff to have abandoned the mark through naked licensing. The court noted that the plaintiff placed no meaningful limitations on how defendant should operate its business.

FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509 (9th Cir. 2010) [S-124] Appellant and appellee were organization promoting freecycling, the donation of unwanted goods for continued use by others. Appellee allowed appellant to describe itself as a freecycling organization. Appellant and appellee subsequently disputed the ownership of the freecycling name. Appellee argued that appellant had abandoned the mark through naked licensing. The court ruled for appellee, finding that appellant exercised no meaningful control over the definition of freecycling.

23

INFRINGEMENT
E. & J. Gallo Winery v. Consorzio del Gallo Nero, 782 F. Supp. 457 (N. D. Cal. 1991) [336] Plaintiff was an American winery that produced and sold wine under the Gallo label. Defendant was an Italian winery that produced wine under the label Consorzio del Gallo Nero. Plaintiff claimed that defendant was infringing plaintiff s trademark. The court ruled for plaintiff, finding defendants use of the term Gallo to create a likelihood of confusion. Defendant argued that it used Gallo only as a part of Gallo Nero, but the court found that American consumers would most readily identify Gallo as an indicator of source. Banfi Products Corp. v. KendallJackson Winery Ltd., 74 F. Supp. 2d 188 (E.D.N.Y. 1999) [343] Banfi sold wine under the label Coldi-Sassi. Kendall-Jackson sold wine under the label Robert Pepi Colline di Sassi. Banfi asked the court to stop Kendall-Jackson from using the Robert Pepi Colline di Sassi mark, arguing that the mark infringed Banfis Col-di-Sassi mark. The court ruled for Kendall-Jackson. Applying the Polaroid factors, the court found the wines to target distinct market segments, so that consumer confusion was unlikely. Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987) [363] Mobil sold petroleum products under its flying horse trademark, which was intended to represent Pegasus, the mythical flying horse from Greek mythology. Pegasus Petroleum sold petroleum products under the trademark Pegasus. Mobil asked the court to stop Pegasus from using the Pegasus trademark, arguing that use of the term Pegasus infringed Mobils flying horse trademark. The court ruled for Mobil, finding that the word Pegasus was sufficiently evocative of a flying horse image to create a likelihood of confusion. The court further found that the use of the Pegasus name might give Pegasus an unfair advantage in soliciting new business partners, even if those partners eventually realized that Pegasus and Mobil were different companies. Blockbuster Entertainment Group v. Laylco, Inc., 869 F. Supp. 505 (E. D. Mich. 1994) [368] Plaintiff operated the Blockbuster chain of video rental stores. Defendant operated the Video Busters chain of video rental stores. Plaintiff argued that Video Busters infringed the Blockbusters trademark. Defendant argued that no infringement was taking place because customers were unlikely to confuse a Video Busters store with a Block24

buster store at the time of rental. The court ruled for plaintiff, finding that the similarity of Video Busters to Blockbuster was likely to help defendant attract customers. Steele v. Bulova Watch Co., 344 U.S. 280 (1952) [394] Bulova manufactured and sold watches under the Bulova trademark. Steele discovered that Bulova had not been registered as a trademark in Mexico, filed a Mexican registration for the Bulova trademark and began producing ersatz Bulova watches in Mexico. Some of Steeles Bulova watches were resold in the United States. Bulova asked the court to stop Steele from selling his watches under the Bulova name. Steele argued that the court had no jurisdiction over his commercial activities in Mexico. The court ruled for Bulova, finding the resale of Steeles watches within the United States to be trademark infringement. McBee v. Delica, 417 F.3d 107 (1st Cir. 2005) [396] McBee was a prominent jazz musician in the United States. Delica was a Japanese clothing company. Delica produced a clothing line under the label Cecil McBee but never sought McBees permission to use the name. Delica operated a website that advertised Cecil McBee clothing, but the website did not allow American customers to make purchases. McBee asked the court to enjoin access to Delicas website from within the United States. The court found itself to lack jurisdiction, noting that the mere display of Delicas clothing on a website had no substantial effect on commerce within the United States. The court found that something more than display, such as the ability to make online purchases, would have been necessary to support jurisdiction. 25

Mastercrafters Clock & Radio Co. v. Vacheron & ConstantinLe Coultre Watches, Inc., 221 F.2d 464 (2d Cir. 1995) [403] Vacheron sold the Atmos clock, which had a distinctive design. Mastercrafters sold a lookalike clock at a significantly lower price. Vacheron argued that Mastercrafters was committing trademark infringement by selling the lookalike clocks. The court ruled for Vacheron, finding that customers would be inclined to buy Mastercrafters clock in order to get luxury design at a low price. Munsingwear, Inc. v. Jockey International, 31 U.S.P.Q.2d 1146 (D. Minn. 1994) [405] Munsingwear manufactured and sold horizontal fly briefs for men. Jockey sold similar briefs. Munsingwear asked the court to stop Jockey from selling its briefs, arguing that Jockey was infringing its trademark for the horizontal fly. The court ruled for Jockey. The court found the respective products to be sufficiently differentiated through packaging. The court further found that since underwear is normally not visible during wear, there was little chance that one brand would be confused for the other during use. Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc., 952 F. Supp. 1084 (D.N.J. 1997) [408] The Harlem Wizards were a show basketball team. The Washington Bullets, an NBA team, sought to change its name to Washington Wizards. Harlem argued that Washington Wizards would infringe the Harlem Wizards trademark. The court ruled for NBA, finding show basketball and competitive basketball to occupy distinct markets,

such that there was little chance of consumer confusion. Dreamwerks Productions, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998) [411] Appellant was an organizer of sci-fi conventions. Appellee operated DreamWorks Studios. Appellee accused appellant infringing appellees trademark for DreamWorks. The court ruled for appellee, finding that consumers were likely to believe that Dreamwerks was a division of DreamWorks Studios. Attrezzi v. Maytag, 436 F.3d 32 (1st Cir. 2006) [414] Appellant was a retail store in Portsmouth, New Hampshire, operating under the name Attrezzi. Appellee was a manufacturer of household appliances. Appellee wanted to sell a product line under the name Attrezzi and sought to register Attrezzi as a trademark. Appellant opposed the registration. The court ruled for appellant, finding a likelihood of consumer confusion. The court pointed out that appellant, like appellee, sold household appliances and that both parties targeted high-end customers. Leelenau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007) [S-127] Plaintiff produced wine under the brand Leelenau Cellars. Defendant produced wine under the brand Chateau de Leelanau Vineyard. Plaintiff asked the court to enjoin defendant from using Leelenau as part of defendants brand name. The court ruled for defendant, finding plaintiff s survey to be flawed.

Network Automation Inc. v. Advanced Systems Concepts Inc., 638 F.3d 1137 (9th Cir. 2011) [S-129] Plaintiff sold an enterprise software product called Auto-Mate. Defendant sold a competing product called ActiveBatch. Defendant advertised ActiveBatch on search engines, using AutoMate as a trigger term for its sponsored links. Plaintiff asked the court to enjoin defendant from using plaintiff s trademark as a trigger term. The court ruled for defendant, finding insufficient evidence to support an injunction. The court departed from reliance on the Internet troika of trademark infringement factors. 1-800 Contacts, Inc. v. Lens.com, Inc., 775 F. Supp. 2d 1151 (D. Utah 2010) [S-138] The court expressed skepticism that using a competitors trademark as a trigger term for ones own goods can constitute trademark infringement. Sensient Technologies v. SensoryEffects, 613 F.3d 754 (8th Cir. 2010) [S-140] Plaintiff sold industrial food-flavoring equipment under the Sensient Flavors trademark. Defendant sold a competing system under the SensoryFlavors trademark. Plaintiff accused defendant of trademark infringement, pointing out that defendant had promoted its product to potential buyers. None of the potential buyers, however, became defendants customer. The court ruled for defendant, finding that promotion of goods without actual delivery of the goods did not constitute use of a trademark in commerce.

26

Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009) [S-144] The court found that the use of trademarks as search engine trigger terms could constitute use in commerce. Inwood Laboratories, Inc., v. Ives Laboratories, Inc., 456 U.S. 844 (1982) [418] Ives was the owner of a patent on a drug, which it sold under the trademark Cyclospasmol. Ives sold the drug in blue capsules. After the patent expired, Inwood began producing the generic version of Cyclospasmol, selling the generic product in similar blue capsules. Some pharmacists subsequently passed off the generic drug as the trademarked version. Ives sued Inwood for trademark infringement, arguing that Inwood was secondary liable because Inwoods lookalike capsules facilitated passing-off. The Court ruled for Inwood, finding Inwood to have done nothing to encourage pharmacists to engage in passing-off. The Court found that similarity of the capsules alone was insufficient to support secondary liability, as capsule color facilitated identification of the drug. The Court further found that Inwoods advertising materials could not be fairly read to suggest that pharmacists should engage in passing-off. Hard Rock Cafe Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143 (7th Cir. 1992) [423] Appellant was a licensed vendor of Hard Rock Cafe apparel. Appellee operated a flea market, at which numerous vendors sold a variety of goods. Appellant discovered that appellees flea market was host to a vendor that sold counterfeit Hard Rock Cafe apparel. Appellant argued that appellee was secondarily liable for trademark infringe-

ment. The court announced that the standard for secondary liability was willful blindness. The court ruled for appellee, finding insufficient evidence to show that appellee had enough knowledge of counterfeiting to support a finding a willful blindness. Georgia Pacific v. Myers, 621 F.3d 771 (7th Cir. 2010) [S-146] Georgia Pacific produced a proprietary paper towel dispenser and towels designed to be used with the dispenser. Myers produced generic towels that were compatible with Georgia Pacifics dispenser. Georgia Pacific accused Myers of contributory infringement of Georgia Pacifics trademark, arguing that Myerss generic towels were likely to cause consumer confusion as to the origin of the paper towels. The court ruled for Myers, finding no likelihood of confusion. The court noted that restroom operators commonly loaded generic paper towels into branded dispensers. Georgia Pacific v. Von Drehle, 618 F.3d 441 (4th Cir. 2010) [S-146] As in Myers, Georgia Pacific accused a manufacturer of generic paper towels for contributory infringement of Georgia Pacifics trademark. The court found that it was possible for restroom users to be confused as to the source of the paper towels in Georgia Pacifics dispensers. Vulcan Golf, LLC v. Google Inc., 552 F. Supp. 2d 752 (N. D. Ill. 2008) [S149] Vulcan Golf operated a website in connection with its business. Vulcan discovered that domain parking companies had registered several domain names similar to its own. The lookalike domain names led to pages showing advertisements administered by Google. Vulcan accused Google of contributorily 27

infringing Vulcans trademark, arguing that the advertisements on the lookalike domains diverted business away from Vulcan. Google moved to dismiss Vulcans complaint. The court ruled for Vulcan, finding Vulcan to have stated a claim for contributory liability. Tiffany & Co. v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010) [S-152] Tiffany & Co. sold expensive jewelry. eBay operated an auction website. Tiffany discovered that counterfeit Tiffany jewelry was being sold on eBay. Although eBay promptly removed listings of counterfeits at Tiffanys request, Tiffany argued that eBay had a duty to police its website for counterfeit goods. eBays failure to do so, argued Tiffany, was contributory infringement of Tiffanys trademark. The court ruled for

eBay, finding eBay not to have specific knowledge of infringement. Gucci America, Inc. v. Frontline Processing, 721 F. Supp. 2d 228 (S.D.N.Y. 2010) [S-157] Plaintiff produced and sold luxury handbags. Defendants provided credit card processing services to online merchants, including a website that sold counterfeit versions of plaintiff s handbags. Plaintiff accused defendants of contributorily infringing plaintiff s trademark, arguing that sales of the counterfeits would not have been possible without defendants services. Defendant moved to dismiss plaintiff s complaint. The court ruled for plaintiff, finding that the processing of financial transactions may constitute intentional inducement of infringement.

28

STATUTORY DEFENSES TO INFRINGEMENT


Park N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985) [434] Petitioner operated airport parking lots under the Park N Fly trademark. Petitioner had established the incontestability of the mark. Respondent was a competing operator of airport parking lots. Respondent challenged petitioners mark, arguing that the mark was merely descriptive. The Court ruled for petitioner, finding that incontestability prevented the mark from being challenged for being merely descriptive. United States Shoe Corp. v. Brown Group Inc., 740 F. Supp. 196 (S.D.N.Y.) [449] Plaintiff manufactured and sold womens pumps. Plaintiff s advertising emphasized the comfort of the shoe with the slogan Looks Like a Pump, Feels Like a Sneaker. Defendant also sold womens pumps. Defendants advertising mentioned that defendants product feels like a sneaker. Plaintiff argued that defendant had infringed plaintiff s trademark by comparing defendants pump to a sneaker. The court ruled for defendant, finding defendants use of sneaker to be fair use of the term. Car-Freshner Corp. v. Johnson & Son Inc., 70 F.3d 267 (2d Cir. 1995) [453] Appellant manufactured and sold pine-scented air fresheners for cars. Appellants product was shaped like a pine tree. Appellee manufactured and sold indoor air fresheners. Appellee also sold a pine-scented air freshener shaped like a pine tree. Appellant accused appellee of infringing appellants trademark, which consisted of the pine-tree shape. The court ruled for appellee, finding appellant could not prevent appellee from using the pine-tree shape in a descriptive capacity. New Kids on the Block v. News America Publishing, 971 F.2d 302 (9th Cir. 1992) [462] New Kids on the Block was a popular band. News America was a newspaper publisher. A newspaper owned by News America ran a poll asking questions such as Whos the best kid on the block? and directing readers to a 900 telephone, where they could cast their votes. New Kids asked the court to enjoin News America from running the polls, arguing that the polls infringed New Kidss trademark. The court ruled for News America, finding New Kids to be sufficiently identified only through the direct use of its name. The court further found that New Kids could not stop other parties from profiting from its 29

popularity as long as the parties committed no trademark infringement. In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) [S-162] Bose owned the Wave trademark for certain types of audio equipment. The trademark was challenged for fraud. The challenger alleged that Boses renewal registration stated that Wave covered audiotape recorders even though Bose no longer made such products. The court ruled for Bose, finding the misstatement to be an honest mistake. The court noted that a belief, even if unreasonable, does not support a finding of fraud unless it shows an intent to deceive.

Pro Football, Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009) [169] Appellant owned the trademark for the Washington Redskins. Appellees were Native Americans. Appllees sought to cancel appellants mark, arguing that the marks were offensive to Native Americans. Appellant argued that appellees challenge was barred by laches. The court ruled for appellant, finding that appellee could not challenge in 1992 a trademark that had been registered in 1967. Au-Tomotive Gold Inc. v. Volkswagen of America, Inc., 603 F.3d 1133 (9th Cir. 2010) [S-174] The court found that the first sale doctrine did not protect a defendant from a finding of trademark infringement where the use of the mark created a likelihood of confusion.

30

FALSE DESIGNATION OF ORIGIN AND TRADE DRESS


DC Comics v. Powers, 465 F. Supp. 843 (S.D.N.Y. 1978) [476] DC Comics was the publisher of the Superman comic book series. The Superman comics regularly featured a fictional newspaper known as The Daily Planet. Powers was the publisher of a real-life newspaper with the same title. DC Comics asked the court to enjoin Powers from publishing the reallife Daily Planet, arguing that Powers was infringing DC Comicss trademark for the Superman series. The court ruled for DC Comics, finding Powerss use of the Daily Planet name to have caused confusion with the Superman comic books. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) [481] Taco Cabana operated a chain of Mexican restaurants with festive interior dcor. Sometime thereafter, Two Pesos established its own chain of Mexican restaurants, which featured similar interior design. Taco Cabana sued Two Pesos for infringing Taco Cabanas trade dress, arguing that Two Pesos had improperly copied Taco Cabanas interior design. The trial court found that Taco Cabanas trade dress was inherently distinctive but that it lacked secondary meaning. The Court ruled for Taco Cabana, finding that inherent distinctiveness sufficed to support a finding of 31 trade dress infringement, even if the infringed trade dress had no secondary meaning. The concurrence noted that the protection of inherently distinctive trade dress did not derive from the literal text of the Lanham Act. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000) [489] Samara designed childrens clothing, supplying its products to department stores such as J. C. Penney. One of Samaras products was a seersucker outfit. Wal-Mart directed its own distributors to copy the outfit, selling the copies at a deeply discounted price. Samara asked the court to stop Wal-Mart from selling the knockoff outfits, arguing that Wal-Mart was infringing Samaras trade dress. The court ruled for Wal-Mart, finding that the design of a product was not a trade dress in the sense of being a source identifier that existed independently of the product itself. Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778 (9th Cir. 2002) [496] Plaintiff was a manufacturer of handheld web cutting knives. Plaintiff had obtained trademark registration for the overall configuration of its knife. Defendant made and sold a similar knife. Plaintiff asked the court to stop defendant from making lookalike knives. The

court ruled for defendant, finding plaintiff s purported trademark to consist of functional elements. The court rejected plaintiff s argument that a combination of functional elements could create a trademark-eligible design. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001) [498] Marketing Displays manufactured and sold road signs mounted on springloaded supports, which were designed to allow the signs to withstand strong winds. The spring-loaded design was the subject of an expired utility patent. TrafFix manufactured and sold road signs mounted on a similar mechanism. Marketing Displays asked the court to stop TrafFix from selling competing signs, arguing that TrafFix was infringing Market Displayss trade dress for the signs. The court ruled for TrafFix, finding that features claimed in utility patents are functional and therefore ineligible for trademark protection. Eco Manufacturing LLC v. Honeywell International Inc., 357 F.3d 649 (7th Cir. 2003) [504] Honeywell manufactured and sold a round thermostat with a dial in the center. Honeywell had obtained a trademark registration for the design of the thermostat, and the trademark was incontestable. Eco sought to sell a similarly designed thermostat. Honeywell asked the court to stop Eco from bringing the lookalike thermostat to market. The court ruled for Eco, finding that incontestability did not prevent a trademark from being challenged for being functional.

Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062 (9th Cir. 2006) [506] Auto Gold sold keychains, license plates, and other paraphernalia bearing the logos of Volkswagen and Audi. Volkswagen asked the court to stop Auto Gold from selling goods bearing Volkswagenss logos. Auto Gold argued that its use of the logos was protected by the doctrine of aesthetic functionality. The court ruled for Volkswagen, finding that aesthetic functionality could not be so broad as to permit the use of a trademark whenever a party believed the trademark to have aesthetic appeal. Gibson Guitar Corp. v. Paul Reed Smith Guitars, 423 F.3d 539 (6th Cir. 2005) [515] Gibson Guitar had obtained trademark registration for the distinctive shape of its guitars. Paul Reed Smith produced guitars with a shape similar to that of Gibsons guitars. Gibson argued that Paul Reed Smiths lookalike guitars infringed the trademark for Gibsons guitars. The court ruled for Paul Reed Smith, finding neither initial-interest confusion nor post-sale confusion. The court rejected Gibsons smoky bar argument, which claimed it would be difficult to distinguish, from a distance, whether a guitar was made by Gibson or Paul Reed Smith. Best Cellars Inc. v. Grape Finds at Dupont, Inc., 90 F. Supp. 2d 431 (S.D.N.Y. 2000) [519] Best Cellars developed a new type of wine store, in which wines were organized by flavor. Best Cellars store also featured distinctive dcor, of which the centerpiece was a wall of wine. Grape Finds built a lookalike store, in which wines were also organized by flavor. The lookalike store also featured a wall of

32

wine. Best Cellars asked the court to stop Grape Finds from operating the lookalike stores, arguing that Grape Finds was infringing Best Cellars trade dress. The court found that Grape Finds had duplicated too closely Best Cellars arrangement of wine and ordered Grape Finds to change its store layout. The court found, however, that Grape Finds could retain the other design elements of its store. Best Cellars v. Wine Made Simple, 320 F. Supp. 2d 60 (S.D.N.Y. 2003) [531] Best Cellars discovered the existence of a lookalike store operated by Wine Made Simple. Wine Made Simples Bacchus stores featured wines organized by flavor and displayed on grid-like racks. Best Cellars moved for summary judgment, asking the court to stop Wine Made Simple from operating its stores. The court declined to issue a summary judgment, finding a factual issue as to whether trade dress infringement had occurred. Conopco, Inc. v. May Department Stores Co., 46 F.3d 1556 (Fed. Cir. 1994) [535] Conopco was the seller of a branded cosmetic product. May Department Stores sold a competing generic product. Conopco asked the court to stop May from selling the generic product, arguing that May was infringing Conopcos trademark for various packaging elements. The court ruled for May, finding that Conopco to have relied on unreliable consumer testimony. The court noted that Conopcos consumer witness held the idiosyncratic belief that companies secretly sold generic products alongside brand-name ones.

McNeil-PPC, inc. v. Guardian Drug Co., 984 F. Supp. 1066 (E. D. Mich. 1997) [541] Plaintiff sold an over-the-counter pharmaceutical product called Lactaid Ultra. Defendant a sold a competing product called Arbor Ultra Lactase. Defendants trade dress was similar to plaintiff s, and defendant placed shelf talker signs comparing defendants product to plaintiff s. The court found defendant to have committed trademark infringement. The court found that defendants use of comparison was not enough to avoid a finding of infringement because defendant had deliberately designed its packaging to resemble plaintiff s. America Online v. LCGM, 46 F. Supp. 2d 444 (E. D. Va. 1998) [543] LCGM was a spamming operation. LGCM sent to AOL subscribers numerous e-mails promoting pornographic websites. LCGM engaged in e-mail spoofing, in which the sender information of each e-mail was altered to make it look as if the e-mail had come from AOL. The court found LCGM liable for false designation of origin. The court found that an ordinary user would likely believe that LCGMs had come from AOL. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) [545] Fox had produced a documentary on World War II. When the copyright for the documentary expired, Dastar produced its own version of the documentary by re-editing footage from Foxs version. Fox asked the court to stop Dastar from distributing Dastars version of the documentary, arguing that Dastar was falsely designating the origin of its product. According to Fox, the similarity of

33

Dastars version to Foxs version would lead viewers to believe that Dastars version had been produced by Fox. The court ruled for Dastar, finding that the origin of goods, for the purposes of the Lanham Act, did not include the authorship of creative works. Bretford Manufacturing, Inc. v. Smith System Manufacturing Corp., 419 F.3d 576 (7th Cir. 2005) [551] Bretford manufactured a computer table with distinctive V-shaped legs. Smith introduced a competing table with similarly shaped legs. Bretford asked the court to stop Smith from selling the competing tables, arguing that Smith was falsely designating the origin of its products. The court ruled for Smith, finding insufficient evidence to show that the Vshaped legs identified Bretford as the manufacturer. The court further noted that indiscriminate recognition of design elements as trademarks could lead to excessive trademarks litigation. Hammerton Inc. v. Heisterman, 2008 WL 2004327 (D. Utah 2008) [S-178] Hammerton manufactured and sold light fixtures. Heisterman, a former employee of Hammerton, had started a competing light-fixture business. Hammerton accused Heisterman of infringing the trade dress for Hammertons light fixtures. The court ruled for Heisterman, finding Hammerton not to have articulated what the purported trade dress was. Autodesk, Inc. v. Dassault Systmes Solidworks Corporation, 685 F. Supp. 2d 1023 (N. D. Cal. 2009) [S-179] Autodesk produced software for computer aided design (CAD). Files produced by Autodesks software had the .dwg file extension. Solidworks was a competing producer of CAD software. Solidworkss software also used the .dwg 34

file extension. Autodesk accused Solidworks of infringement Autodesks trade dress, arguing that Solidworks was falsely designating the origin of its product by using the .dwg extension. The court ruled for Solidworks, finding file extensions to be functional. Specialized Seating, Inc. v. Greenwich Industries, L.P., 616 F.3d 722 (7th Cir. 2010) [S-181] Greenwich had registered a trademark consisting of the overall design of a folding chair. Specialized manufactured similar folding chairs. Greenwich accused Specialized of infringing Greenwich trademark for the chair. The court found Greenwichs trademark to be invalid because the chair design had been the subject of a utility patent. Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (2d Cir. 2010) [S-184] Franek sold round beach towels, having registered the circular shape of his towels as a trademark. Jay Franco & Sons was a competing seller of round beach towels. Franek accused Franco of infringing Franeks trademark for round towels. The court ruled for Franco, finding the circular shape not to be eligible for trademark protection. McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350 (3d Cir. 2007) [S-194] McNeil produced Splenda brand sucralose, packaging the product in yellow packets. Heartland produced generic sucralose for sale under store brands. Heartland also packaged its sweetener in yellow packets. McNeil accused Heartland of infringing McNeils trade dress, arguing that Heartlands use of yellow packets created a likelihood of confusion. The court ruled for Heartland, finding consumers to associate yellow packaging with sucralose

in general, not with the Splenda brand in particular.

35

ADVERTISING
Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968) [557] Chanel made and sold famous perfumes, such as Chanel No. 5. Smith sold smell-alike fragrances under the TaRon Line of Perfumes. Advertisements for the TaRon perfumes challenged consumers to detect any difference between brand-name perfumes and Smiths generic versions. Chanel asked the court to enjoin Smith from engaging in such competitive advertising, arguing that the advertisements were causing consumer confusion. The court ruled for Smith, finding comparisons to be an essential element of advertising. As long as there was no confusion, said the court, competitors are allowed to say that their products are as good as those of a brand name. August Storck K.G. v. Nabisco, Inc., 59 F.3d 616 (7th Cir. 1995) [564] Storck manufactured and sold Werthers Original candy. Nabisco planned to introduce a competing product called Life Savers Delites. The packaging for Life Savers Delites featured the phrase 25 percent lower in calories than Werthers Original candy. Storck asked the court to stop Nabisco from using the Werthers name on the packaging for Life Savers Delites, arguing that Nabisco was infringing the Werthers trademark. The court ruled for Nabisco, finding its use of the Werthers trademark to be an accept36 able form of comparison. The court found that consumer confusion was unlikely. Procter & Gamble Co. v. Amway Corp., 242 F.3d 539 (5th Cir. 2001) [571] P&G had been plagued by persistent rumors claiming that it had an affiliation with the Church of Satan. Amway distributed a message repeating the rumor. P&G sued Amway for disparaging P&Gs commercial activities. Amway argued that its message was protected speech. The court found that Amways liability depended on whether the message was commercial speech. Only if the message was commercial speech was there a remedy for disparagement under the Lanham Act. Coca-Cola Co. v. Tropicana Products, Inc., 690 F.2d 312 (2d Cir. 1982) [576] Coca-Cola and Tropicana were competing sellers of orange juice. Tropicana produced a television advertisement in which juice was squeezed directly from an orange and poured into a Tropicana carton. The advertisement was designed to emphasize the freshness of Tropicanas orange juice. Coca-Cola asked the court to enjoin Tropicana from showing the advertisement, arguing that the advertisement was literally false. CocaCola argued in particular that Tropicanas advertisement did not actually portray the manufacturing process for Tropi-

canas orange juice, which did not consist of squeezing orange juice directly into cartons. The court ruled for Coca-Cola, finding the advertisement did not make adequately clear that Tropicanas orange juice was in fact pasteurized before packaging. United Industries Corp. v. Clorox Co., 140 F.3d 1175 (8th Cir. 1998) [579] United and Clorox were competing sellers of cockroach traps. United promoted its trap with a television advertisement featuring a side-by-side comparison. The comparison showed one kitchen, in which Uniteds product had been applied, alongside a second kitchen, in which a competitors product had been applied. The United kitchen was in pristine condition whereas the competitors kitchen was filthy. Although the competitor was not identified by name, the packaging of the competitors product vaguely resembled Cloroxs packaging. Clorox asked the court to stop United from airing the advertisement, arguing that the advertisement was literally and implicitly false. The court ruled for United, finding that the advertisement did not make a claim of complete roach control. Schick Manufacturing, Inc. v. Gillette Co., 373 F. Supp. 2d 273 (D. Conn. 2005) [580] Schick and Gillette were competing manufacturers of razors. Gillette promoted its M3 razor in a television advertisement, which claimed that micro-pulses generated by the razors motion would raise hair up and allow for a closer shave. The advertisement featured animations purporting to show the micro-pulsing action at work. Schick asked the court to stop Gillette from using the advertisement, arguing that the advertisement was literally false. The court ruled for Schick, finding the 37

advertisement to grossly exaggerate the hair raising properties of Gillettes razor. The court noted that a party may not distort an inherent quality of its product in advertising. Clorox Co. Puerto Rico v. Proctor & Gamble Commercial Co., 228 F.3d 24 (1st Cir. 2000) [583] Clorox and P&G were competing manufacturers of laundry detergent. P&G created an advertising campaign for its detergent. The campaign featured two slogans: Mas blanco no se puede (Whiter is not possible) and Ace con blanqueador (Ace with whitener). Clorox asked the court to stop P&G from running the campaign, arguing that the slogans were false and misleading. P&G argued in particular that Mas blanco no se puede was literally and that Ace con blanqueador was misleading. The court ruled for Clorox, finding that a trier of fact could take both claims at face value. Johnson & Johnson Vision Care, Inc. v. Ciba Vision Corp., 348 F. Supp. 2d 165 (S.D.N.Y. 2004) [591] J&J and Ciba were competing manufacturers of contact lenses. Ciba ran an advertisement stating, 75% of lens wearers preferred [the Ciba lens] to [the J&J lens]. The #1 reason was comfort. J&J asked the court to stop Ciba from using the advertisement, arguing that it made false claims. J&J pointed out in particular that a number of consumers in Cibas comparison expressed no reason for preferring either brand. The court ruled for Ciba. The court found that of those consumers who did express a preference, comfort was indeed the #1 reason for their choice.

Polar Corp. v. Coca-Cola Co., 871 F. Supp. 1520 (D. Mass. 1994) [592] Polar, a manufacturer of seltzer water, created a commercial in which an animated polar bear is shown throwing a can of Coca-Cola into a trash bin labeled Keep the Arctic Pure. Coca-Cola asked the court to stop Polar from using the commercial, arguing that Polar was disparaging the quality of Coke. The court ruled for Coca-Cola, finding the commercial to suggest improperly that Coke was somehow impure. Coors Brewing Co. v. AnheuserBusch Co., 802 F. Supp. 965 (S.D.N.Y. 1992) [593] Coors produced Coors Light beer. Coorss manufacturing process required a concentrated form of the beer to be shipped from Colorado to Virginia, where the concentrate was diluted to make the final product. Anheuser-Busch produced Natural Light, a competing light beer. Natural Light was produced in a similar process, in which water was added to a beer concentrate. AnheuserBusch produced a commercial ridiculing Coorss cross-country shipment of its beer concentrate. Coors asked the court to stop the airing of Anheuser-Buschs commercial, arguing that the commercial disparaged Coors Light. The court ruled for Anheuser-Busch, finding that Coors could not prevent a competitor from undermining its claim that Coors Light was the taste of the Rockies. McNeil-PPC, Inc. v. Pfizer Inc., 351 F. Supp. 2d 226 (S.D.N.Y. 2005) [600] Pfizer manufactured and sold Listerine mouthwash. A commercial for Listerine claimed that Listerine was as effective as floss in removing plaque from between teeth. McNeil, a manufacturer of dental floss, argued that the Listerine commercial was literally false. The

court ruled for McNeil, finding the evidence to show that rinsing with mouthwash and flossing were not actually equivalent. Serbin v. Ziebart International Corp., 11 F.3d 1163 (3d Cir. 1993) [610] The court that only competitors, as opposed to consumers, have standing to sue for false advertising under section 43(a) of the Lanham Act. Ortho Pharmaceutical Corp. v. Cosprophar, Inc., 32 F.3d 690 (2d Cir. 1994) [611] Ortho manufactured and sold a prescription acne medication. Cosprophar manufactured and sold anti-aging cosmetics. Ortho sued Cosprophar for false advertising, arguing that Cosprophar was falsely claiming that its products contained the same active ingredients as Orthos. The court ruled for Ortho, finding prescription acne treatments and anti-aging cosmetics to be in different markets. Autodesk, Inc. v. Dassault Systmes Solidworks Corp., 685 F. Supp. 2d 1001 (N. D. Cal. 2009) [S-197] Autodesk and Solidworks were competing producers of CAD software. Autodesk ran an advertisement describing Solidworkss product as unreliable. Solidworks ran an advertisement stating that its software was interoperable with Autodeskss products. The companies accused each other of false advertising. The court found both parties to have engaged in permissible puffery. Osmose, Inc. v. Viance, LLC, 612 F.3d 1298 (11th Cir. 2010) [S-199] Osmose and Viance were competing manufacturers of lumber preservatives. Viance ran a series of advertisements stating that Osmoses products were ineffective. The advertisements stated

38

that wooden posts treated with Osmoses products were structurally unsound. Osmose accused Viance of false advertising. Viance argued that its advertisements were puffery. The court ruled for Osmose, finding Viances advertisements to have made factual claims. Natural Answers v. SmithKline Beecham Corp., 529 F.3d 1325 (11th Cir. 2008) [S-203] Natural Answers sold HerbaQuit smoking cessation lozenges. HerbaQuit lozenges were eventually discontinued. After HerbaQuit lozenges were no longer on the market, SmithKline introduced its own smoking cessation lozenge, advertising it as the first and only stop smoking lozenge. Neutral Answers accused SmithKline of engaging in false advertising. The court ruled

for SmithKline, finding Natural Answers not to have standing since it no longer manufactured HerbaQuit lozenges. Famous Horse, Inc. v. 5th Avenue Photo, Inc., 624 F.3d 106 (2d Cir. 2010) [S-203] Appellant was a retailer that sold Rocawear brand jeans at discount prices. Appellee wholesaler that sold counterfeit Rocawear jeans. Appellant asked the court to stop appellee from continuing to sell the counterfeit jeans. Appellee argued that appellant had no standing. The court ruled for appellant, finding that appellees sale of counterfeit jeans at discount prices would erode appellants market and lead consumers to believe that appellant also sold counterfeit products.

39

DILUTION
Ty Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002) [619] Ty manufactured and sold Beanie Baby plush animals. Perryman operated a website that sold secondhand Beanie Baby toys. Perrys store was known as Bargain Beanies. Ty asked the court to enjoin Perryman from using Bargain Beanies as the name for the store, arguing that Perryman was diluting the Beanie Baby trademark. The court ruled for Perryman, finding that Perryman was using Beanies as an accurate description of the secondhand goods. Visa International Service Association v. JSL Corp., 610 F.3d 1088 (9th Cir. 2010) [S-217] Visa operated a payment network. JSL sold eVisa language learning software. Visa asked the court to stop JSL from continuing to use the eVisa brand, arguing that JSL was diluting the Visa trademark. The court ruled for Visa, finding JSL to have a created an arbitrary association between the term visa and language learning software, which weakened the existing association between visa and Visas services. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) [S-220] Louis Vuitton produced and sold luxury handbags. Haute Diggity Dog produced chew toys for dogs. The chew toys parodied fashion labels. One toy 40 bore the label Chewy Vuitton and imitated design elements from Louis Vuittons handbags. Vuitton asked the court to stop Haute Diggity Dog from selling the Chewy Vuitton toy, arguing that Haute Diggity Dog was diluting Louis Vuittons trademark. The court ruled for Haute Diggity Dog, finding that Haute Diggity Dogs imitation of Louis Vuittons design elements did not amount to use of the Louis Vuitton mark. Starbucks Corp. v. Wolfes Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) [S-226] Wolfes Borough sold coffee under the Black Bear Micro Roastery brand. One variety of its coffee was called Charbucks. Starbucks asked the court to stop Wolfes from using the Charbucks name, arguing that Charbucks was diluting the Starbucks trademark. The court ruled for Wolfes, finding that Charbucks did not tend to tarnish the Starbucks name. The court noted that Wolfes promoted Charbucks as a highquality product. V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382 (6th Cir. 2010) [S-235] Appellant was a corporate affiliate of Victorias Secret. Appellee operated a store called Victors Little Secret. Appellees store sold sex toys and related products. Appellant accused appellee of diluting the Victorias Secret trademark. The court ruled for appellant,

finding that appellee had not rebutted a presumption of dilution. The dissent argued that none of the evidence suggested that Victors Little Secret modified consumers impression of the Victorias Secret brand. Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 U.S.P.Q.2d 1111 (T.T.A.B. 2010) [S-240] The court found that the owner of a famous international mark must use that mark within the United States in order to have a cause of action for dilution of the mark. The Hershey Co. v. Art Van Furniture, Inc., 2008 WL 4724756 (E. D. Mich. 2008) [S-243] Art Van was a furniture retailer. Art Van decorated the sides of its delivery trucks with the image of a couch emerg-

ing from a giant chocolate-bar wrapper. Hershey accused Art Van of diluting Hersheys trade dress, arguing that Art Vans truck decoration was too similar to the packaging of a Hersheys chocolate bar. The court ruled for Hershey, finding Art Vans design to copy several design elements of the Hersheys packaging. Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 663 F.3d 1158 (9th Cir. 2011) [S-247] Levi Strauss accused Abercrombie & Fitch of infringing Strausss trade dress for V-shaped stitching on the back pockets of jeans. Abercrombie & Fitch argued that no dilution had occurred because the stitching was not identical or nearly identical. The court ruled for Strauss, finding no requirement of identicality for a finding of dilution.

41

AUTHORS AND PERFORMERS RIGHTS


Gilliam v. American Broadcasting Companies, Inc., 538 F.2d 14 (2d Cir. 1976) [662] Gilliam was a member of the Monty Python comedy troupe. ABC received a license to broadcast Monty Pythons Flying Circus, a program written by Monty Python. ABC, however, edited significant portions of the program in order to make time for commercials and to remove material it deemed offensive. Gilliam asked the court to enjoin ABC from broadcasting the modified program, arguing that ABC was falsely designating the origin of the modified program under section 1125(a) of the Lanham Act. The court ruled for Gilliam, finding the modified program no longer to be Monty Pythons work product. Antidote International Films v. Bloomsbury Publishing PLC, 467 F. Supp. 2d 394 (S.D.N.Y. 2006) [666] Antidote had obtained the rights to produce a film based on a novel. The novel had purportedly been written by one J. T. Leroy. Antidote discovered, however, that J. T. Leroy was merely an invention of the true author of the book. Antidote sued Bloomsbury, the books publisher, for falsely designating the origin of the novel. The court ruled for Bloomsbury, applying the Dastar rule to find that attributing a book to a fictitious author was not a false designation of origin. 42 King v. Innovation Books, 976 F.2d 824 (2d Cir. 1992) [669] Stephen King was the author of a short story entitled Lawnmower Man. Innovation Books, working with movie studios, a produced a movie version of Lawnmower Man. The movies plot contained significant differences from the books, but the studios decided to call the movie Stephen Kings Lawnmower Man. King asked the court to enjoin the studios from attributing the movie to him, arguing that the studios had falsely designated the origin of the movie. The court ruled for King, noting that King had never approved the production of the movie. Miramax Films Corp. v. Columbia Pictures Enterprises, 996 F. Supp. 294 (S.D.N.Y. 1998) [674] Columbia produced a movie, which it described as being from the creator of Scream. The creator of Scream, however, had no relationship to Columbias movie. Miramax asked the court to enjoin Columbias use of the description, arguing that the description falsely designated the origin of the movie. The court ruled for Miramax, finding Columbia to have misled consumers regarding the creator of the movie. Allen v. National Video, 610 F. Supp. 612 (S.D.N.Y. 1985) [677] Woody Allen was a famous movie director. National Video ran an adver-

tisement featuring a Woody Allen lookalike. Woody Allen asked the court enjoin National Video from using his likeness, arguing that the advertisement falsely described National Videos services. The court ruled for Allen, finding National Video to have created a likelihood of confusion as to whether Allen was in fact associated with the video chain. Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) [684] Ford created an advertising campaign for its cars. Ford wanted Midler to sing the music for television commercials, but Midler refused. Ford hired a soundalike to take Midlers place. Midler asked the court to enjoin Ford from running the commercial featuring the sound-alike, arguing that Ford was infringing her right of publicity. The court ruled for Midler, finding that a voice was as distinctive as a face. White v. Samsung Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992) [688] Vanna White was a personality on the Wheel of Fortune game show. Samsung ran an advertisement featuring a robot that was reminiscent of Whites role on the game show. White asked the court to enjoin Samsung from using the advertisement, arguing that Samsung had infringed her right of publicity. The court ruled for White, finding Samsungs robot lookalike to implicate Whites commercial interests. The dissent argued that Samsung should not be liable for evoking Whites role on the show. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) [699] Ginger Rogers was an actress known for her longstanding partnership with actor Fred Astaire. She and Astaire had become sufficiently famous to be known by their first names, Ginger and Fred. 43

Grimaldi, an Italian film producer, produced an Italian film entitled Ginger and Fred, in which the protagonists became the Ginger and Fred of their country. Rogers asked the court to stop Grimaldi from using the Fred and Ginger title, arguing that it falsely suggested a connection with the real-life Ginger and Fred. The court ruled for Grimaldi, finding Grimaldi to have an interest in free expression in using the title. OGrady v. Twentieth Century Fox, 2003 WL 24174616 (E. D. Tex. 2003) [707] OGrady was a former fighter pilot who had written a book about being shot down over Bosnia. Fox produced a docudrama based on OGradys book. The docudrama was subtitled The Scott OGrady Story. OGrady asked the court to enjoin Fox from broadcasting the program. The court found an issue of fact as to whether the title misleadingly suggested a connection between the program and OGrady. ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003) [708] Tiger Woods controlled ETW, through which he handled transactions involving the use of his likeness for commercial purposes. Jireh published a painting depicting Woods in several different poses on the golf course. Woods asked the court to enjoin the sale of the painting, arguing that Jireh was infringing Woodss trademark for his likeness as well as his right of publicity. The court ruled for Jireh. The court found that Woods had no trademark rights for his own image, so that he could not be walking, talking trademark. The court further found the painting not to infringe Woodss right of publicity because it was a means of expression.

Boston Athletic Association v. Sullivan, 867 F.2d 22 (1st Cir. 1989) [725] Boston Athletic Association organized the annual Boston Marathon. Before each running of the Marathon, the Association passed out t-shirts bearing the Boston Marathon logo to participants. The Association licensed the logo to private t-shirt producers, which were forbidden from making unauthorized merchandise bearing the Boston Marathon logo. Sullivan made and sold unauthorized t-shirts bearing the logo. The Association asked the court to enjoin Sullivan from selling the merchandise. The court ruled for the Association, finding the t-shirts to infringe the Associations trademark even though the logo did not wrongly designate the manufacturer of the shirts. The court found that Sullivans shirts were likely to create confusion as to the existence of a connection between his business and the Marathon. WCVB-TV v. Boston Athletic Association, 926 F.2d 42 (1st Cir. 1991) [734] Appellant broadcast portions of the Boston Marathon, showing the words Boston Marathon at the bottom of the screen. Appellee Boston Marathon Association argued that appellant was infringing the Associations trademark for the Marathon. The court ruled for appellant, finding its broadcast to be fair use of the Boston Marathon trademark. Facenda v. NFL, 542 F.3d 1007 (3d Cir. 2008) [S-253] Facenda had been a broadcaster for the NFL. After his death, the NFL decided to feature his voice in a promotion for a football video game. Facendas heirs accused the NFL of creating the false impression that Facenda endorsed

the video game. The court ruled for Facenda, finding the advertisement to be commercial speech. C.B.C. Distribution and Marketing, Inc. v. Major League Baseball, 505 F.3d 818 (8th Cir. 2007) [S-256] CBC marketed fantasy baseball games, which featured the identitites of major-league baseball players. Major League Baseball accused CBC of violating the players right to publicity. The court ruled for CBC, finding the use of the players identities to be protected by the First Amendment. Board of Supervisors for Louisiana State University v. Smack Apparel, 550 F.3d 465 (5th Cir. 2008) [S-257] Smack Apparel produced unauthorized clothing bearing the school colors of well-known universities, including LSU. Although Smacks products bore no school insignia, they occasionally featured slogans that referred to the identity of particular schools. LSU asked the court to stop Smack from selling LSUreferencing shirts. Smack argued that color combinations alone were not eligible for trademark protection. The court ruled for LSU, finding school colors to have secondary meaning. American Needle, Inc. v. National Football League, 130 S. Ct. 2201 (2010) [S-259] American Needle was a producer of licensed sports merchandise. American Needle initially received a license from the NFL to produce headwear bearing the logos of NFL teams. The NFL subseuqently revoked American Needles license, opting instead to grant exclusive licenses to Reebok. American Needle accused the NFL of violating section 1 of the Sherman Antitrust Act. The court ruled for American Needle, finding each NFL team to be a distinct supplier 44

of trademark licenses. The joint refusal of all NFL teams to license to American

Needle was therefore a conspiracy to restrain trade.

45

INTERNET DOMAIN NAMES


Sportys Farm L.L.C. v. Sportsmans Market, Inc., 202 F.3d 489 (2d Cir. 2000) [750] Appellee sold aviation equipment through mail-order catalogs. Appellee registered and used Sporty as a trademark for its products. Appellant decided to start a competing business. Appellant gained control of the sportys.com domain name and arranged for the domain name to be registered to a farm selling Christmas trees. Appellee asked the court to end appellants control of the sportys.com domain name. The court ruled for appellee. Applying the multi-factor test from section 1125(d)(1) (A) of the Lanham Act, the court found appellant to have registered sportys.com for the purpose of making the domain unavailable to appellee. Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004) [757] Grosse hired Lucas Nursery to perform certain landscaping work, which Grosse found inadequate. Gross subsequently registered the lucasnursery.com domain name, using it for a gripe site complaining about the Nurserys unsatisfactory work. The Nursery asked the court for control of the domain. The court ruled for Grosse, finding her ownership of the domain to be supported by her use of the website for criticism of the Nursery. Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214 (4th Cir. 2002) [766] Harrods operated the well-known Harrods department store in London. A former corporate affiliate of Harrods registered numerous domain names, each of which was a variation on the Harrods name. Harrods pursued an in rem action against the domain names because their owner could not be located. The court allowed Harrods to proceed on the in rem theory, finding an in rem action to be authorized whenever the registrant of a potentially infringing domain name cannot be located. Cable News Network LP v. CNNews.com, 56 F. Appx 599 (4th Cir. 2003) [773] CNN discovered that a Chinese company, Shanghai Maya, had registered the cnnews.com domain name. CNN asked the court for ownership of the domain name. Shanghai Maya argued that the court lacked jurisdiction. The court allowed CNN to proceed in rem, ordering cnnews.com to be transferred to CNN. Dial-A-Mattress Operating Corp. v Moakely, WIPO Arbitration and Mediation Center Case No. D20050471 (July 1, 2005) [781] Complainant operated a mattress business under the name 1-800-MATTRESS. Respondent, who was not in 46

the mattress business, registered the mattress.com domain name. Complainant asked the Center for ownership of the domain name. The Center ruled for complainant, finding respondent to have registered the domain name in bad faith. Estate of Gorshin v. Martin, WIPO Arbitration and Mediation Center Case No. D2005-0803 (Oct. 31, 2005) [789] Frank Gorshin was an actor who had portrayed a number of a well-known characters in movies. During his career, Martin registered therealfrankgorshin.com as a domain name. After Gorshins death, his estate asked the Center for ownership of the domain name. The Center ruled for the estate, finding Martin to have registered the domain name in bad faith. The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc. / Front and Center Entertainment, WIPO Arbitration and Mediation Center Case No. D2004-0947 (Jan. 20, 2005) [792] The Orange Bowl Committee was the owner of the trademark for the Orange Bowl. Front and Center registered several domain names relating to the Orange Bowl, including orangebowltickets.net. The domain name, however, led to a site that promoted tickets for various other sporting events in addition to the Orange Bowl. The Committee asked the Center for ownership of the orangebowltickets.net. The Center ruled for the Committee, finding Front and Center to have no legitimate interest in the domain name.

Deutsche Welle v. Diamondware Ltd., WIPO Arbitration and Mediation Center Case No. D2000-1202 (2001) [804] Complainant and respondent were companies that both identified themselves using the abbreviation DW. Respondent had registered the dw.com domain name. Complainant asked the Center for ownership of the domain name. The Center ruled for respondent, finding respondent to have no reason to know about complainants operations, which were based in a foreign country. Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14 (1st Cir. 2001) [806] Appellant had registered the corinthians.com domain name. Appellee was the owner of the Corinthiaos soccer team in Brazil. Appellee gained ownership of the domain name by filing a complaint under the Uniform Dispute Resolution Policy. Appellant believed that he rightfully owned the domain name and sued to regain ownership. The court reversed the district courts dismissal of appellants claim. Dluhos v. Strasberg, 321 F.3d 365 (3d Cir. 2003) [807] The court found the Uniform Dispute Resolution Policy not to fall within the scope of the Federal Arbitration Act. Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617 (4th Cir. 2003) [810] Appellant registered the barcelona.com domain name, intending to create a website promoting tourism in Barcelona. Appellee was the Barcelona City Council. Appellee asked the court for ownership of the domain name. The court ruled for appellant, finding Barcelona to be

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descriptive and therefore ineligible for trademark protection. Fagnelli Plumbing Co. v. Gillece Pluming & Heating, Inc., 2011 WL 693349 (W. D. Pa. 2011) [S-261] Fagnelli and Gillece operated competing plumbing businesses. Fagnelli used the domain name fagnelliplumbing.com for its website. Gillece registered the domain name fagnelli.com, such that a visitor going to fagnelli.com would see Gilleces website. Fagnelli asked the court for ownership of the fagnelli.com domain name. The court ruled for Fagnelli, finding Gillece to have registered a confusing domain name with a bad-faith intent to profit. Southern Grouts & Mortars v. 3M Co., 575 F.3d 1235 (11th Cir. 2009) [S267] Continuing to renew the registration of a domain name that one no longer uses in conjunction with any product is not bad-faith intent to profit. DSPT International, Inc. v. Nahum, 624 F.3d 1213 (9th Cir. 2010) [S-270] DSPT was a clothing seller. DSPT hired Nahum to design and administer is website. Nahum owned the registration for DSPTs domain name. The business relationship between DSPT and Nahum eventually deteriorated, with Nahum leaving DSPT and taking the domain name with him. DSPT asked the court for ownership of the domain name. The court ruled for DSPT, finding Nahum to have tried to use the domain name as leverage against DSPT. The court found Nahums negotiation strategy to be a bad-faith intent to profit.

Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research, 527 F.3d 1045 (10th Cir. 2008) [S-277] Appellant and appellee had opposing views on the Mormon Church. Appellee created a created a website that parodied appellants website. The court found appellees website to fall within the safe harbor provision of the Anti-Cybersquatting Consumer Protection Act, which protected fair us of trademarks. Southern Co. v. Dauben, Inc., 324 F. Appx 309 (5th Cir. 2009) [S-281] Southern Company operated a website under the domain name southerncompany.com. Dauben was a typo squatter that had registered several misspellings of Southerns name for domain parking pages. Southern asked the court to stop Dauben from operating websites under the typo-squatted domains. The court ruled for Southern. Fields for Senate v. Toddles Inc., WIPO Arbitration and Mediation Center Case No. D2006-1510 (Mar. 14, 2007) [S-287] Virginia Fields was running for political office. An opponent registered several variations of her name as domain names, using them for websites that criticized her candidacy. Fields asked the Center for ownership of the domain names. The Center ruled against Fields, finding her name not to constitute a trademark. Hoteles Tursticos Unidos S.A. v. Jomar Technologies, WIPO Arbitration and Mediation Center Case No. D2008-0136 (Apr. 3, 2008) [S-291] Complainant operated the Eurostar Blue Hotel. Respondent registered the

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domain name eurostarblue.com, using it for a website visitors to boycott complainants hotel. Complainant asked the Center for ownership of the domain name. The Center ruled for complainant, finding respondents use of the domain name to create a likelihood of confusion. Southern California Regional Rail Authority v. Arkow, WIPO Case No. D2008-0430 (May 12, 2008) [S-293] Complainant operated the Metrolink rail service. Respondent registered the domain name metrolinkrider.com, using it for a website providing unofficial Metrolink information. When complainant sent a cease-and-desist letter to respondent concerning the website, respondent registered metrolinksucks.com, using it for a gripe site about Metrolink. The Center ruled for respondent, finding respondent to have an interest in using the domain names for non-commercial communications concerning Metrolink. First Baptist Church of Glenarden v. Jones, WIPO Arbitration and Mediation Center Case No. D20090022 (Feb. 26, 2009) [S-293] Complainant church operated a website at fbcglenarden.org, where it posted

announcements. Respondent was a former member of the church, who had left after a disagreement with the minister. Respondent registered the domain name fbcglenarden.com, where visitors were redirected to another website, which criticized religion. Complainant asked the Center for ownership of the fbcglenarden.com domain name. The Center ruled for complainant, finding respondent to have created a likelihood of confusion. Plan.net concept Spezialagentur fur Kommunication GmbH v. Yikilmaz, WIPO Arbitration and Mediation Center Case No. D2006-0082 (Mar. 24, 2006) [S-296] Complainant operated a business whose name was Plan.net. Respondent had registered the domain name plan.net, which was used for a domain parking site. Complainant asked the Center for ownership of the plan.net domain name. The Center ruled for respondent, finding respondent to have registered plan.net in good faith. The Center noted that respondent had registered plan.net because it contained a common English word, not because he wanted to profit from complainant.

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TRADEMARKS AS SPEECH
San Francisco Arts & Athletics, Inc. v. United States Olympic Committee, 483 U.S. 522 (1987) [817] Petitioner was the organizer of the Gay Olympics, whose events and ceremonies paralleled those of the official Olympics. Respondent asked the Court to enjoin petitioner from using the term Olympics in conjunction with the gay sporting event. The Court ruled for respondent, finding that Congress could reasonably have concluded that any unapproved use of the term Olympics could lead to consumer confusion. The dissent argued that the restriction was overly broad. Kussbaum v. Steppenwolf Productions, Inc. [828] Appellant was a former member of the band Steppenwolf. The Steppenwolf trademark was owned by appellee. After leaving Steppenwolf, appellant advertised himself as formerly of Steppenwolf. Appellee asked the court to enjoin appellant from using Steppenwolf in his advertisements. The court ruled for appellant, finding that appellants emphasis of former made confusion unlikely. Playboy Enterprises, Inc. v. Welles [831] Welles was a former Playboy Playmate of the Year. Welles operated a website, which listed her credentials as Playmate of the Year. Playboy asked the 50 court to enjoin Welles from using the phrase. The court ruled for Welles, finding Playmate of the Year to be necessary to describe Welless former position. The court, however, found that repetition of the abbreviation PMOY was not necessary to describe Welles. Mutual of Omaha Insurance Co. v. Novak, 836 F.2d 397 (8th Cir. 1987) [838] Mutual of Omaha had registered an Indian head logo as a trademark. Novak produced t-shirts and other products bearing parodies of the logo, which featured phrases such as Nuclear Holocaust Insurance. Mutual asked the court to enjoin Novak from selling goods bearing the parody logos. The court ruled for Mutual, finding survey evidence to show a likelihood of confusion between Novaks parody and the original logo. The dissent criticized the survey evidence for unduly suggesting a connection between the parody logo and Mutual. Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490 (2d Cir. 1989) [843] Cliffs Notes published Cliffs Notes study aids, which summarized commonly taught novels. Bantam published Spy Notes, a parody of Cliffs Notes. The parody resembled a Cliffs Notes book, with a yellow cover and diagonal black stripes. The cover, how-

ever, also displayed the phrase A Satire several times as well as the Spy Books logo. Cliffs Notes asked the court to enjoin the sale of the Spy Notes parody. The court ruled for Bantam, finding that relevant consumers would likely relaize that Spy Notes were not a Cliffs Notes product. Anheuser-Busch, Inc. v. Balducci Publications [852] Balducci published a parody advertisement for Michelob beer. The advertisement showed a beer called Michelob Oily as part of an environmentalist message. Anheuser-Busch asked the court to enjoin the publication of the advertisement. The court ruled for Anheuser-Busch, finding the parody to create a likelihood of confusion. The court noted that Balducci had used the Michelob logo without modification. Yankee Publishing [856] Yankee published the Farmers Almanac. News America published New York magazine. News America copied the distinctive style of the Almanacs cover for a holiday issue. Yankee asked the court to enjoin the publication of the issue. The court ruled for News America, finding the publications to target different sets of consumers. MGM-Pathe Communications [858] Plaintiff owned the trademark for the Pink Panther cartoon character. Defendant was a gay rights organization calling itself the Pink Panther Patrol, whose purpose was to patrol neighborhoods to discourage anti-gay violence. Plaintiff asked the court to enjoin defendant from using the Pink Panther name. The court ruled for plaintiff, finding a likelihood of confusion. The court noted that the Pink Panther trademark was sufficiently well-known that a likelihood of confusion existed even though 51

plaintiff and defendant targeted different audiences. Mattel, Inc. v. Universal Music International [859] Mattel manufactured and sold Barbie dolls. Universal produced the recordings of a band called Aqua. One of Aquas songs was called Barbie and Ken, the lyrics of which satirized the Barbie and Ken image promoted by Mattel. In performing the song at concerts, one band member played the Barbie role while another played Ken. Mattel asked the court to stop Universal from distributing the song. The court ruled for Universal, finding the song to be a permissible use of the trademark because it criticized Barbie herself. Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003) [868] Walking Mountain produced a series of photographs featuring Barbie dolls in bizarre scenes. Mattel asked the court to enjoin Walking Mountain from selling copies of the photographs. The court ruled for Walking Mountain, finding Walking Mountain to have made nominative use of the Barbie image. MasterCard International Inc. v. Nader 2000 Primary Committee, Inc., 70 U.S.P.Q.2d 1046 (S.D.N.Y. 2004) [885] MasterCard promoted its services through a series of priceless commercials. Ralph Naders political campaign promoted Ralph Nader using commercials with a similar format. MasterCard asked the court to enjoin the Nader campaign from imitating MasterCards priceless commercials. The court ruled for the campaign, finding that the campaigns commercials did not create a likelihood of confusion with MasterCards services. The court further found

the campaigns advertisements not to dilute MasterCards trademark. Planned Parenthood Federation of America, Inc. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997) [889] Plaintiff owned the service mark Planned Parenthood. Defendant registered the plannedparenthood.com domain name and used it as the location of an anti-abortion website. Plaintiff asked the court to enjoin defendant from using the domain name. The court ruled for plaintiff, finding that defendant had attempted to identify the website as being affiliated with plaintiff. The court noted that defendants website displayed Welcome to the Planned Parenthood Home Page on the home page. Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998) [892] Plaintiff was an organization that promoted the conversion of Jews to Christianity. Defendant registered the domain names jewsforjesus.org and jews-for-jesus.com, using them for a website promoting views opposing plaintiff s. Plaintiff asked the court to enjoin defendant from using the domain names. The court ruled for plaintiff, finding defendant to have created a bogus site in order to lure visitors away from plaintiff s site. WHS Entertainment Ventures v. United Paperworkers International Union, 977 F. Supp. 946 (M. D. Tenn. 1998) [894] Plaintiff operated a restaurant and bar known as the Whitehorse Saloon. Defendant was a labor union. Defendant protested working conditions at plaintiff s business by distributing flyers featuring a parody of plaintiff s logo. Plaintiff asked the court to enjoin defendants from distributing the flyers. The court ruled for defendant, finding the 52

defendant not to be using the parody logo in commerce. The court found that defendant was using the logo only to criticize plaintiff s working conditions, not to promote a good or service. People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001) [896] Doughney registered the domain name peta.org and used it for a website called People for the Eating of Tasty Animals. PETA asked the court to enjoin Doughney from using the domain name. The court ruled for PETA, finding Doughneys site likely to prevent visitors from PETAs official website. The court further noted that Doughney had apparently registered the domain name in bad faith. Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) [904] Jerry Falwell was a well-known reverend. Lamparello registered the domain name fallwell.com, using it for a website criticizing Falwells anti-gay views. The home page disclaimed any affiliation with Falwell and displayed a link to Falwells official website. Falwell asked the court to enjoin Lamparello from operating the website under the fallwell.com domain name. The court ruled for Lamparello, finding no likelihood of confusion. Toyota Motor Sales U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010) [S-300] Appellees were auto brokers, who facilitated negotiations between car buyers and car dealers. Appellees operated websites under the domain names buy-alexu.com and buyorleaselexus.com. Appellant asked the court to enjoin appellees from using the domain names, arguing that appellees were infringing appellants trademark. The court ruled

for appellee, finding appellees domain names to be nominative use of appellants mark. Anheuser-Busch v. VIP Products, 666 F. Supp. 2d 974 (E. D. Mo. 2008) [S307] VIP sold Butt Wiper dog toys, which parodied the Budweiser trademark. The court enjoined the sale of the toys, finding survey evidence to show consumer confusion. Smith v. Wal-Mart Stores, 537 F. Supp. 2d 1302 (N. D. Ga. 2008) [S308] Smith sold t-shirts and stickers bearing altered versions of the Wal-Mart logo, which included slogans such as Wal-Ocaust and Wal-Qaeda. WalMart asked the court to enjoin the sale of merchandise bearing the altered logos, arguing that Smith was infringing and diluting Wal-Marts trademark. The court ruled for Smith, finding Smiths logos to be parodies. Parks v. LaFace Records, 329 F.3d 437 (6th Cir. 2003) [S-313] The band Outkast recorded a song entitled Rosa Parks. The song had nothing to do with the personal history of Rosa Parks, containing only the line Everybody move to the back of the bus. Rosa Parks argued that Outkast was infringing her right of publicity.

The court agreed, finding that Outkast had misled listeners as to the contents of the song. E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) [S-314] Appellant operated a strip club called the Play Pen. Appellee was the developer of the video game Grand Theft Auto: San Andreas, which featured an ingame strip club called the Pig Pen. Appelant argued that appellee was infringing appellants trademark. The court ruled for appellee, finding that no player was likely to confuse the in-game strip club with plaintiff s establishment. Protectmarriage.com v. Courage Campaign, 680 F. Supp. 2d 1225 (E. D. Cal. 2010) [S-321] Plaintiff was an organization opposing gay marriage. Defendant was an organization supporting gay marriage. Plaintiff developed a logo for a website, which featured a stylized stick-figure representation of a heterosexual couple with children and the text Yes on 8 Protect Marriage. Defendant altered plaintiff s logo to show a same-sex couple with children and the text Prop 8 Trial Tracker. Plaintiff argued that defendant was infringing its trademark. The court ruled for defendant, finding that defendants logo did not create a likelihood of confusion.

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REMEDIES
Nova Wines, Inc. v. Adler Fels Winery LLC, 467 F. Supp. 2d 965 (N. D. Cal. 2006) [912] Nova Wines sold wines under the Marilyn brand. Marilyn brand wines were sold in bottles bearing photographs of Marilyn Monroe. Adler was a competing winery, which planned to launch its own line of Marilyn Monroe wines. Nova asked the court a preliminary injunction to stop Adler from selling the competing wines. The court ruled Nova, finding that Novas status as the sole seller of Monroe-branded wines would be irreparably damaged if Adler were allowed to use the Monroe brand. Home Box Office v. Showtime, 832 F.2d 1311 (2d Cir. 1987) HBO and Showtime were unaffiliated cable television channels. Showtime launched a series of advertisements with the slogan Showtime & HBO, encouraging viewers to purchase the two channels together. HBO asked the court for a preliminary injunction to stop Showtime from using the advertisements. The court ruled for HBO, finding Showtime to have created the impression that HBO and itself were affiliated. The court noted that an injunction was necessary to ensure that Showtime did not engage in further use of the HBO brand. Soltex Polymer Corp. v. Fortex Industries, Inc., 832 F.2d 1325 (2d Cir. 1987) [922] Soltex produced raw materials for plastics manufacturing, which it sold under the Fortilex brand. Fortex produced rubber products, some of which were sold under its own Fortilex brand. Soltex asked the court to enjoin Fortex from using the Fortilex brand, arguing that an injunction should issue whenever there was a likelihood of confusion. The court ruled for Fortex, finding that courts should be free to use equitable discretion. Perfect Fit Industries v. Acme Quilting Co., 646 F.2d 800 (2d Cir. 1981) [927] Defendant appealed the trial courts decision to order the recall of infringing products. The court affirmed, finding it within the discretion of the trial court to order a recall if the interests of the trademark owner required it. Nikon, Inc. v. Ikon Corp., 987 F.2d 91 (2d Cir. 1993) [928] Defendant Ikon appealed the trial courts decision to order the recall of Ikon brand cameras, which had been found to infringe Nikons trademark for Nikon cameras. The court affirmed.

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Gucci America, Inc. v. Daffys, Inc., 354 F.3d 228 (3d Cir. 2003) [929] Gucci America appealed the trial courts refusal to enjoin Daffys from selling counterfeit Gucci handbags. The court affirmed, finding that customers who had bought the counterfeits were unlikely to believe that they owned a real Gucci product. The dissent criticized the ruling for disregarding the purpose of trademark law. Taco Cabana International, Inc. v. Two Pesos, Inc., 932 F.2d 1113 (5th Cir. 1991) [934] Two Pesos was found to have infringed Taco Cabanas trade dress for Mexican restaurants. Two Pesos appealed the trial courts award of damages, arguing that damages required a finding of actual confusion. The court affirmed, finding that actual confusion was not a prerequisite for damages. The court found that Two Pesoss presence in the market deprived Taco Cabana of profits. Banjo Buddies, Inc. v. Renosky, 399 F.3d 168 (3d Cir. 2005) [937] Renosky was found to have infringed Banjo Buddies trademark for a fishing lure. Renosky appealed the trial courts decision to order him to disgorge profits to Banjo Buddies, arguing that disgorgement required a finding of willful infringement. The court affirmed, finding that willfulness was not a prerequisite for disgorgement. Ross Cosmetics Distribution Centers v. United States, 34 U.S.P.Q.2d 1758 (Ct. Intl Trade 1994) [988] Ross Cosmetics sold cosmetic products under the Gorgeous brand. Ross received notice from Customs that

Gorgeous brand products were subject to seizure by Customs for infringing Giorgio Armanis Giorgio trademark. Ross appealed the decision. The court affirmed, finding the packaging of Gorgeous products to create a likelihood of confusion with Armani products. K Mart Corp. v. Cartier, Inc., 486 U.S. 281 (1988) [992] Customs had promulgated regulations prohibiting the importation of gray market goods. The court mostly affirmed the regulations. Bourdeau Brothers v. ITC, 444 F.3d 1317 (Fed. Cir. 2006) [996] Bourdeau imported John Deere harvestered intended for the European market to the United States. The ITC found the importation of the harvesters to be trademark infringement. Bourdeau appealed the finding. The court affirmed, applying a standard of material difference between goods destined for distinct geographic markets. The court noted that the European harvesters had different lighting fixtures, safety features, and warning labels from their American counterparts. North American Medical Corp. v. Axiom Worldwide, Inc., 552 F.3d 1211 (11th Cir. 2008) [S-325] The court adapted the eBay rule, which is normally applied to patent cases, to the issuance of injunctions against trademark infringement. Nightingale Home Healthcare, Inc. v. Anodyne Therapy, LLC, 626 F.3d 958 (7th Cir. 2010) [S-328] The court found that attorneys fees should be awarded against a party that had brought claims for a purpose unrelated to obtaining a favorable judgment.

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Related Interests