Trademark

Is It Too Late For Velcro to Hook the Public on Hook and Loop?

In an effort to protect itself against genericide—the death of a trademark because the brand name becomes synonymous with the type of product—Velcro’s legal department released a video two weeks ago pleading with the public to stop saying “Velcro” and start saying “hook and loop” or “self-adhesive straps.”  (Watch it, really.)  Amazingly, Velcro’s play on the ballad “We are the World” has already gone viral.  Though the comments on the video are mixed, Velcro’s video is certainly raising awareness of its brand.  READ MORE

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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Judge Dow Orders New Trial Due to Unreliable Consumer Confusion Survey

Order Granting Motion for New Trial, The Black & Decker Corp., et al. v. Positec USA, Inc., et al., N.D. Ill. (September 11, 2017) (Judge Robert M. Dow, Jr.)

Trademark litigants often submit survey evidence to prove that there is (or is not) a likelihood of consumer confusion between two trademarks. Parties hoping to rely on such surveys should be careful, however, to mimic market conditions as closely as possible—for instance, ensuring that the emulated market conditions include an appropriate context reflecting how purchases actually are made. Parties also should heed professional survey research in constructing survey designs, so that the results are considered trustworthy and directed to the relevant issue. READ MORE

Two Recent Decisions Highlight Divergent Extraterritorial Application of Lanham Act and Copyright Act

The question whether and under what circumstances the Lanham Act and the Copyright Act will be applied to conduct occurring at least partially outside the United States grows increasingly important as the world economy continues to globalize and many manufacturers seek to extend their franchises across borders. Two recent federal court decisions have addressed this issue, underscoring the somewhat anomalous differences in extraterritorial enforcement of trade dress and copyright laws, as well as the ability of plaintiffs to obtain injunctive relief with extraterritorial effect. READ MORE

Don’t Get Boxed In By a Consumer Survey: T.T.A.B. Refuses Trade Dress Protection for Cheerios Yellow

Order Affirming Refusal of Registration, In re General Mills IP Holdings II, LLC, T.T.A.B. (August 22, 2017)

Trademark portfolio owners have long known the pitfalls in securing trade dress protection for a single color. The Trademark Trial and Appeal Board recently underscored those difficulties in affirming the Trademark Office’s refusal to register the color yellow as trade dress in connection with General Mills’ Cheerios cereal. READ MORE

From Northern California to the Entire IP Landscape: Orrick’s New Blog

We’re excited to announce the recent transition of Orrick’s former NorCal IP blog into its new iteration – IP Landscape (Today’s News, Tomorrow’s Strategy)!  Our new blog is more comprehensive in scope and will focus on a variety of intellectual property issues and events, both national and international, that are likely to affect the bottom line for many technology-driven enterprises. Through our blog, you’ll find information and updates to help drive business strategies.

We hope this new blog will be an entertaining and useful resource for those interested in the latest case law, happenings and events that affect the entire landscape of intellectual property. We’ll be covering patent, trademark and copyright rulings in what might be described as the most “popular” venues, such as the Northern and Central Districts of California, the Eastern District of Texas, the District of Delaware, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). We will also be reporting on other IP-related and newsworthy events, such as significant developments in copyright, trademark, antitrust, entertainment and trade secret litigation, not to mention legislative changes, local networking events, IP licensing issues and other hot topics of interest. READ MORE

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

Inadequate Disclosures Preclude Monetary Damages Recovery in Trademark Infringement Suit

Order Granting in Part and Denying in Part Defendant’s Motion for Summary Judgment, Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc., Case No. 3:15-cv-04618-WHO (Judge William H. Orrick)

As any practitioner who has sought to establish trademark infringement already knows, likelihood of confusion is difficult to prove at trial. Nonetheless, a recent Order in Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc. demonstrates that plaintiffs still retain certain inherent advantages at the summary judgment stage in proving that there exists a likelihood of confusion, given the high hurdle for defendants to convince a court that no genuine issues of fact exist and that summary judgment is warranted.  But as this case also demonstrates, that does not mean that plaintiffs can “sleep at the wheel,” so to speak, when disclosing infringement or damages theories during discovery. READ MORE

The 4-Hour Plaintiff: Author/Speaker/Podcaster Tim Ferriss Secures Default Judgment

Order Granting In Part And Denying In Part Plaintiffs’ Motion For Default Judgment, Timothy Ferriss, et al. v. Alliance Publishing, Inc., et al., Case No. 15-cv-05675 (Judge Edward M. Chen)

Tim Ferriss is known for authoring The 4-Hour Workweek and other self-help books on the “4-Hour” theme. He may now become known as the “4-Hour Plaintiff” after he and a company he owns, Krisa Performance, obtained a default judgment against defendants alleged to have improperly used his name and likeness in connection with a fraudulent scheme.

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