Posts by: Chris Civil

Not All Buffalos are Alike: Court Finds No Likelihood of Consumer Confusion Between Bourbon Bottle and Wine Bottle Trade Dress

Findings of Fact and Conclusions of Law, Sazerac Co. Inc. v. Fetzer Vineyards,
N.D. Cal. (Sept. 19, 2017) (Judge William Orrick)

Winemaker Fetzer Vineyards recently escaped a trademark infringement lawsuit brought by Sazerac Co. Inc. over the label design and imagery featured on its 1000 Stories red zinfandel wine product.  Sazerac produces a bourbon called Buffalo Trace which features a label that contains an image of a buffalo facing head-on towards the right, as well as an image of a buffalo on the neck of the bottle and white and gold lettering.  Sazerac has used the Buffalo Trace trade dress in commerce since 1999, and has several federal trademark registrations for the buffalo design and the word mark BUFFALO TRACE.  In 2013, Fetzer developed a male-orientated bourbon aged wine brand and selected the buffalo as the icon for the brand based in part on an article in the Smithsonian magazine entitled “101 Objects that Made America.”  Although Fetzer’s wine label also featured an image of a buffalo in which the entire animal is visible, on its wine label the animal faces toward the left and is placed on a black background.  The following image is a comparison shot of the two respective bottles:

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Sneaker Wars: Adidas Defeats Summary-Judgment Motion That Claimed Stan Smith Shoe Design Lacks Distinctiveness

Order Granting in Part and Denying in Part Motion for Summary Judgment,  Adidas America Inc. et al. v. Skechers USA Inc., D. Or. (August 3, 2017) (Judge Marco Hernández)

The ever-increasing popularity (and collectability) of athletic shoes seems to have brought along with it an increase in the amount of litigation involving trade dress protection for the look of some of the more popular shoe designs. Last year, the International Trade Commission found that Converse’s trademark rights in the design of the Chuck Taylor sneaker were invalid due to widespread use of similar designs by competitors.  That decision is now the subject of a closely watched appeal at the Federal Circuit.  More recently, in a dispute between adidas and Skechers, a court found that factual issues prevented entry of summary judgment regarding whether the look of adidas’ Stan Smith shoe design is generic and whether it has acquired secondary meaning. READ MORE

Fictional, but Protectable: Court Nixes “The Krusty Krab” Restaurant on Trademark Grounds

Summary Judgment Order, Viacom International Inc. v. IJR Capital Investments, LLC, S.D. Tex. (January 11, 2017) (Judge Gray Miller) 

The Emmy nominations have been announced, and the fall television season is just weeks away. Accordingly, we thought it would be fun to revisit an interesting trademark ruling from earlier this year that still seems timely given these events.

With the rise of social media, mobile phone applications and viral marketing, cross-overs between the real world and the fictional world of T.V. shows, movies and video games, are becoming increasingly commonplace. To promote the upcoming season of its popular T.V. show Better Call Saul, for example, AMC created actual Los Pollos Hermanos fast-food restaurants in cities across the U.S.  Similarly, in the summer of 2006, ABC and the creators of Lost created an alternative reality game called The Lost Experience that included such disparate activities as advertisements of fictional companies on a variety of ABC programs and advertising sponsor websites, the publication under a pseudonym of a best-selling mystery novel called “Bad Twin,” a live disruption at San Diego’s Comic-Con by a fictional protagonist named Rachel Blake trying to unravel some of Lost’s mysteries, and the world-wide sale at special locations of fictional “Apollo” candy bars that had been featured in the show.  As these examples reflect, the names and likeliness of fictional locations, objects, and characters can represent significant and valuable components of a company’s intellectual property rights. READ MORE