http://blog.ceb.com/2010/05/19/when-is-a-chocolate-bar-iconic/
Breaking Up the Ninth Circuit Is Not Ruled Out
Parody? Me thinks not.
Just how far can a competitor go in parodying a competitor’s trademark to promote its own goods or services? Courts have been fairly liberal in allowing use of names or slogans which, although not exact copies of registered marks, clearly trade on the goodwill or familiarity of that mark. Take for example the case THE NORTH FACE v. THE SOUTH BUTT where both businesses market winter clothing and sports apparel. It is not difficult to see why this is a concern for The North Face Apparel Company but any legitimate trademark owner has a hill to climb in enjoining such use. Remember that the standard for infringement generally is whether a mark is “likely to confuse” the consumer or whether consumers may believe an association exists between the original trademark owner and a wayward competitor. It seems self evident that a mark invoking comedic parallels or other distinctions from the registered mark is most likely not sponsored by the original mark owner. In the North Face case, South Butt founder eighteen year old Jimmy Winkelmann has readily admitted that the fleece jackets and other clothing sold by his company are intended to mock people who wear brand-name clothing sold by outfitters like The North Face. The fact that the case has now settled, and that South Butt continues to promote products on its website, suggests that the power of parody has won out again. See North Face v. South Butt
Lindsay Lohan Gone Too Far
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As a lawyer, there are not too many cases I see that don’t have some merit. But the latest foray by Lindsay Lohan against Etrade for the baby “milkaholic” commercial absolutely takes the cake. Does she really think she is the only “Lindsay” out there? Apparently so. So much that consumers watching a baby commercial with three babys, one of which happened to be named Lindsay, would immediately associate it with her trial and tribulations? Get over yourself please. It takes more than a name to draw a connection (Madonna or Sting notwithstanding) and certainly a fairly common “Lindsay” with nothing else associating the character with the charming little baby (don’t even go there) is not so “substantially similar” that some association can be drawn. Either Ms. Lohan is growing desparate for publicity or her lawyer has sold her on herself- which probably is not hard to do.
A Place Unknown
One of the often cited reasons for denying trademark registration is the contention that a certain mark is “geographically deceptively misdescriptive” which involves situations where a proposed mark includes or is principally made up of a geographic indicator material to the consumer’s decision to purchase those particular goods or services but the goods or services are in fact not derived from that particular geographic region. Marks such as “boston baked beans” for example, or “Colorado steaks” may be rejected from registration if the USPTO concludes that the reason a consumer would purchase such goods is the (mistaken) belief that the goods emanate from those areas. While there may be a basis to register geographically deceptively misdescriptive marks that have been in use pre NAFTA (circa 1993), the majority of claims these days would be denied. As a result, businesses hoping to trade off of well-known geographic locales had better be prepared to move there if they want to register such marks.
What’s In A Name?
Who owns a name? In these days of flash and splash, celebrity personas are valuable commodities used to hock everything from salad dressing (Newman’s Own) to shoes (Air Jordans). So what happens when one celebrity rescinds his consent for use of his name in a business deal? Dwayne Wade with the Miami Heat is about to find out. Wade was sued in Federal Court by former business associates, claiming that his decision not allowing the venture to proceed with his name and likeness amounts to anti-trust violations. According to plaintiffs, Wade’s withdrawal from the venture effectively removed a competitor in the memorabilia market triggering anti-trust implications. Wade Lawsuit So is your name really your name? Sometimes not. Sound ridiculous? Well the artist formerly known as Prince might have something to say about that. Prince\’s Names
This One is For the Birds
No wonder lawyers get a bad name. A case out of the 9th Cir. shows just how far some people are willing to go to make their case (or a buck ). Plaintiffs Joseph Birdsong and Bruce Waggoner apparently filed a complaint claiming that the Apple iPod player was defective because it poses an unreasonable risk of noise-induced hearing loss to its users. The complaint was styled as a class action, with the plaintiffs seeking to represent a statewide group of iPod consumers, arguing that the device failed to live up to certain implied warranties of merchantability and fitness for a particular purpose because it came with stock ear buds, no noise isolating or cancelling properties, and lacked any volume meter informing users that certain levels of listening were dangerous. Stunningly, the plaintiffs had not suffered any personal injury as a result of the alleged breaches, but rather argued these were modifications they wanted to see made. In sustaining the lower court’s dismissal of the matter, the appellate court concluded that plaintiffs failed to allege how the absence of their suggested changes caused any user an injury. The plaintiffs do not allege the iPods failed to do anything they were designed to do nor do they allege that they, or any others, have suffered or are substantially certain to suffer inevitable hearing loss or other injury from iPod use. What will they think of next?
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