Will the Latest Trademark Infringement Lawsuit Determine Whether the Use of Keywords Trademarked by Another Is Legal?

The battle over whether search engines can allow third parties to bid on and use keywords incorporating the trademarks of third parties has heated up once again, as blogged about at the Technology & Marketing Law Blog here.  American Airlines has filed a trademark infringement lawsuit against Yahoo and Overture d/b/a Yahoo! Search Marketing over its handling of keywords.  The counts include Lanham Act claims of trademark infringement, contributory trademark infringement, vicarious trademark infringement, false representation, dilution, equivalent Texas state law claims, and tortuous interference with contract.

General Cigar prevails on claims of trademark infringement, dilution, counterfeiting, unlawful importation, unfair competition and cybersquatting.

General Cigar Prevails in Trademark Infringement and Counterfeiting
Suit Relating to "COHIBA Caribbean's Finest" Cigars and Rum - MarketWatch

RICHMOND, Va., Jul 10, 2008 (BUSINESS WIRE) -- General Cigar Co. Inc. announced today that the United States District Court for the District of Nevada has ruled in its favor, granting its motion for summary judgment, awarding damages and permanently prohibiting the import, marketing, distribution and sale of infringing "COHIBA Caribbean's Finest" cigars and rum.
General Cigar prevailed on its claims which held the defendants liable for trademark infringement, dilution, counterfeiting, unlawful importation, unfair competition and cybersquatting. As a result, the court awarded General Cigar a permanent injunction, plus compensatory and treble damages.

This resolves a lawsuit filed in 2006 but does not resolve General Cigar's enforcement activities against counterfeit good. General Cigar continues to retain a special task force consisting of trademark attorneys to assist it in its trademark enforcement efforts.
Technorati Tags: General Cigar, trademark infringement, dilution, counterfeiting, unlawful importation, unfair competition, cybersquatting.

Trade Name vs. Trademark: TTAB Clarifies the Difference Between Words Used to Describe Products and Services and Those Indicating a Business Name

When the public speaks colloquially about trademark law it often refers to all types of words or marks as “trademarks.”  But not all words qualify as trademarks.  A trade name, the name under which a business operates, can often be registered as a trademark, but the use of a trade name alone is not enough to protect others from appropriating that mark.  Businesses often believe that they are protected from the misappropriation of their trade name just by virtue of its use, but the Trademark Trial and Appeal Board has held differently.

Three Stripes? You're Out! Adidas Awarded $305 mil against Payless for Willful Infringement

An experienced trademark attorney can help you avoid the mistakes of those that have come before you.  Experienced trademark attorneys understand how to help businesses abide by the terms of settlement agreements, and what actions are likely to be found infringing in the aftermath of a negotiated settlement in a trademark dispute.  Failing to understand the mistakes of the past can be a costly misstep in trademark law, and in the case of Payless Shoes it proved to be a $305 million disaster. 

Trademark Rights – Registration Alone Isn’t Enough: Filing a Statement of Use for a 1(b) Application

Protecting your trademarks through the United States Patent and Trademark Office is, of course, important, but application alone is not enough.  It is more important to see a trademark all the way through to the end of the registration process, especially when it is filed under a 1B “intent to use” application.  1B applications allow those that have yet to use their goods and services in interstate commerce to file for trademark protection.  A Statement of Use must be filed within six months after the application's Notice of Allowance is issued to show that the goods or services have been, in fact, used in commerce.  This process allows a trademark applicant to protect its mark before using it in commerce, which can be an effective strategy for protecting a mark from theft by another party.  But failing to file a timely Statement of Use, or an extension of time to file, can result in the loss of your trademark rights.

The Lifecycle of a Trademark Opposition: Understanding the Trademark Opposition Process at the Trademark Trial and Appeal Board (TTAB)

What do you do when you, or preferably your trademark-monitoring attorney, find a application in the United States’ Patent and Trademark Office’s database that is likely to confuse consumers because it is similar to your mark?  One possible solution is to file an opposition.  Every trademark must go through a series of stages on its way to registration, hopefully on the Principal Register.  One of these stages, titled publication for opposition, allows a party to oppose the registration of a trademark that it believes is likely to cause confusion with its mark.

First Circuit Holds "Duck Tours" is a Generic Trademark

Thinking about registering a trademark?  Make sure you have a competent attorney doing your pre-registration trademark search and think about selecting a mark that is not widely used.  Using a widely used mark will likely welcome other users of the same mark.   Showing that generic trademarks can arise from abbreviations, the First Circuit Court of Appeals recently held that the phrase “duck tours,” when used in a composite mark in relation to boat tours, is generic and causes no likelihood of confusion.  This decision reversed the district court's holding that the “Super Duck” trademark, in connection with boat tours in the Boston area, created a likelihood of confusion with the plaintiff's “Boston Duck” mark. 

Breaking Down the Chateau Grand Traverse v. Grand Traverse Distillery Trademark Case

As previously posted "Chateau Grand Traverse Sues Grand Traverse Distillery Over Name" we have two local companies fighting over trademark rights to use "Grand Traverse" as part of their brand. 

Grand Traverse Distillery sells Vodka.   Chateau Grand Traverse sells wine.  Of course, the question raised is whether the geographic indicator for Grand Traverse, the county in which both companies operate, is capable of trademark protection in the first instance.   This is not the first time the issue of geographic descriptiveness has come to the forefront locally, as two wineries in Leelanau County, Michigan fought over the use of "Leelenau" in their wine branding last year which culminated in a three judge appellate panel of the sixth circuit court of appeals ruling in favor of Chateau de Leelanau Vineyard and Winery on trademark infringement claims brought by Leelanau Wine Cellars, Ltd. In that case, the court of appeals ruled that there was unlikely to be consumer confusion (and mysteriously overlooking the more obvious problem of geographic descriptiveness).

Chateau Grand Traverse Sues Grand Traverse Distillery Over Name

The Traverse City Business News is reporting that Chateau Grand Traverse, a Michigan winery, has filed a federal lawsuit against vodka producer Grand Traverse Distillery alleging trademark infringement over the distillery's use of the "Grand Traverse" name.  The dispute arises from the winery's opposition to the Distillery's Trademark filing with the United States Patent and Trademark Office (USPTO) for registration of the mark "Grand Traverse Distillery" on the principal registrar. 

The winery claims trademark rights in the name since it has used the mark "Chateau Grand Traverse" since 1977 and had recently filed and was granted trademark registration in late 2007. Grand Traverse Distillery filed for its trademark protection July 2005.  However, trademark rights date back to the date of first use in commerce. 

This is an interesting lawsuit in that both companies deal in the manufacture and sale of alcohol beverages which Chateau Grand Traverse says has led to confusion among customers.

Read the full article below...

What is a Trademark Worth?

Adidas, registered trademark owner of the three stripes design, has won a trademark infringement lawsuit against Collective Brands Inc., the operator of Payless and Stride Rite shoe stores.  The verdict: $305 million dollars.  While years of marketing, brand protection, and consumer advertising undoubtedly contributed to the strength of the trademark, it all started with the trademark being registered with the USPTO (and in other countries).  You can see an example of the three stripes here.  By investing in its trademarks and other intellectual property, Adidas positioned itself to protect against the unauthorized use of its trademarks, and more importantly pursue those infringers.  The result is monetary damages and a strengthened trademark.  This verdict confirms that a trademark has tremendous value to an organization.  The proper investment should be made in order to ensure you have performed a proper trademark availability search when selecting a trademark, registered your trademark upon selecting it, continuously used the trademark in a proper manner, and taken efforts to protect it by preventing unauthorized use of the trademark.  Contact us today for all matters relating to your trademark.