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China Law Blog Explains Agent Exception to China's First-to-File Trademark
2007-12-11 03:02:00
The Seattle- and Shanghai- based China Law Blog explains the “agent” exception to China’s first-to-file rule. Citing a post by the China Business Law Blog, it summarizes Chinese authority holding that a trademark owner’s business agent cannot act as the owner’s agent in registering a trademark.“What this means in real life is that if you are a foreign company manufacturing your product in China, the company you use to find your manufacturer and the company you use for your actual manufacturing cannot file your foreign trademark in China. So if you have a United States trademark and you make the huge mistake of not registering your trademark in China when you first go over there, there are about 1.3 billion people in China who can register ‘your’ U.S. trademark in China and ‘take’ it from you, but your agents are not one of them. “What this really means though is that everyone in China can usurp you...
More About: Agent , File , Exception

Latest Band Name Dispute Pits Souljah Boy Against Soulja Boy
2007-12-08 20:56:00
Photo credit: musikizme.comAs STL readers know, I love a good band name dispute. The latest involves Little Willie Lyons, a/k/a “Soulja h Boy,” who filed suit yesterday in the District of Nevada against fellow rapper Deandre Way, a/k/a “Soulja Boy ,” Mr. Way’s manager, and Mr. Way’s publishers. Mr. Lyons claims that SOULJA BOY infringes and dilutes his common law rights in SOULJAH BOY (with an “H”).Mr. Lyons states he has sold millions of records as “Souljah Boy,” and has been featured in “volumes of advertising, magazine articles and other media since 1995 in the continental United States and abroad.”Mr. Way is one of the most popular musicians today. In September, his single “Crank That (Soulja Boy)” reached number one on Billboard’s Hot 100 chart based on national sales and radio play. In an application to register SOULJA BOY with the Patent an...
More About: Band , Infringement , Dispute

MEECO and True Value Settle Infringement Suit
2007-12-06 02:17:00
On April 5, STL reported on a Western District order dismissing on copyright preemption grounds unfair competition and unjust enrichment claims MEECO Manufacturing Co., Inc., had brought against True Value Co. MEECO claimed in the suit True Value uses and displays images of MEECO’S RED DEVIL fireplace products in its electronic catalog without authorization and ships competing products when it receives orders for those products. The court found the product labels and logo at issue came within the subject matter of MEECO’s copyright registrations and the unfair competition and unjust enrichment claims really amounted to a copyright claim.  Yesterday, Judge Robert Lasnik granted the parties’ agreed motion to dismiss MEECO’s claims against True Value. The order does not affect MEECO’s claims against Imperial Sheet Metal, Ltd., and Imperial Manufacturing Group, which True Value joined in May as third-party d...
More About: Infringement , Settle , Suit

Western District Awards Maximum Statutory Damages in Cybersquatting Case
2007-12-05 03:04:00
The Western District today entered its Findings of Fact and Conclusions of Law in the Lahoti v. Vericheck, Inc., cybersquatting case. As STL discussed here, plaintiff David Lahoti filed a declaratory judgment action challenging the National Arbitration Forum’s UDRP order that his domain name, vericheck.com, be transferred to Vericheck, and finding that his registration does not violate the Anti-Cybersquatting Consumer Protection Act. Vericheck counterclaimed for cybersquatting, trademark infringement, and violation of Washington’s Consumer Protection Act.In August, Judge James Robart found on summary judgment that Mr. Lahoti had registered and used vericheck.com in bad faith; that he was not entitled to the ACPA’s “safe harbor” provision; that vericheck.com and VERICHECK are identical or confusingly similar; and that Vericheck’s use of the mark predated Mr. Lahoti’s registration of the domain name.In November, t...
More About: Awards , Case

Starbucks Chairman Marks Trademark Settlement with Trip to Africa
2007-12-04 06:16:00
Africa News reports today that Starbucks Chairman Howard Schultz is in Africa recognizing the company’s settlement with Ethiopian coffee farmers over the rights to three coffee names: SIDAMO, HARAR, and YIRGACHEFFE. In the last few months, STL has discussed the settlement here and here.Mr. Schultz summarized the dispute by saying: “The Ethiopian government wanted to potentially trade mark pieces of geography that stand for where the coffee is from, whether it is Harar or Sidamo or any other place and that is their privilege and their right. Starbucks as a company, we can’t tell any government what to do or what not to do, we are just customers.” Downplaying the controversy, he added: “The issue of the trademark was never as contentious as it was reported.”In the end, he said it made sense for Starbucks to align itself with Ethiopian farmers to promote sustainability and high quality coffee. For that, he said, Starbucks&nbs...
More About: Africa , Trip , Trademark

Seattle Times Discusses TTAB's Spam Arrest Decision
2007-12-02 18:19:00
This morning, The Seattle Times wrote about the Hormel v. Spam Arrest decision as part of its “Sunday Buzz” feature. As discussed here, Seattle-based Spam Arrest won the proceeding, enabling it to keep its federal registration for SPAM ARREST in connection with software that fights unsolicited commercial email. The decision involving Seattle-based Spam Arrest marked the “first and only” win a software company has had over Hormel, the maker of SPAM canned meat, over the everyday use of the word “spam” in a trademark to refer to unsolicited commercial email. The article quotes me as saying this is the first time I can think of in which a trademark became a common word not through genericide (as happened with aspirin and escalator) but through mutation. Spam Arrest doesn’t use “spam” to refer to canned meat — a proprietary use Hormel retains — but to mean unsolicited commercial email.&#...
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STL Turns One
2007-12-01 20:19:00
Nov. 29 marked STL’s first anniversary. I spent Thanksgiving weekend last year trying out blogging software and wondering if anyone would ever read what I wrote. I had two unique hits for the month of November — me from home and me from work. That was fine with me, because I was still developing my site and, though technically a part of the Web, I didn’t feel quite ready to go “live.” Ron Coleman outted me. He must have noticed all my hits to his site, because he very publicly welcomed me to the IP law blogging world a year ago today. Here come the flames, I thought, waiting for ruthless commentators to rip my meager efforts to shreds. But it never happened. In fact, in the last year (in response to my blog at least), I’ve never heard an unkind word. I’ve only experienced generosity. I’ve gotten more than a leg up from some true giants in this field — Ron Coleman, Marty Schwimmer, John Welch, Re...

HBO Decides Not to Fight Application to Register HEALTH AND THE CITY
2007-11-30 02:53:00
The Wall Street Journal’s Law Blog reports on New Yorker Jennifer Cassetta’s fight with Home Box Office, Inc., over her 2006 application to register HEALTH AND THE CITY in connection with “physical fitness instruction.” (Law Blog’s first post on the story here.) HBO, owner of its “Sex and the City ” television program and SEX AND THE CITY family of marks, had extended the time to oppose Ms. Cassetta’s application since June. However, its last extension lapsed on Nov. 18, clearing the way for Ms. Cassetta to get her registration. Most of the reader comments applauded Ms. Cassetta’s triumph over the “suits” at HBO and its parent, Time Warner Inc. However, two thought Ms. Cassetta had brought the trouble on herself by selecting a trademark that trades off HBO’s. I’ve got to side with the latter view. Out of the infinite universe of possible trade...
More About: Health , Dilution , Fight , Infringement

Paint Remover Makers Settle Trademark and Trade Dress Dispute
2007-11-29 05:58:00
Last July, Bellingham, Wash.-based Homax Products, Inc. filed a declaratory judgment action against Dynacraft Industries, Inc. Both parties manufacture paint removal products that change color to signify when the paint they are applied to is ready to be stripped.One of Dynacraft’s READY STRIP productsHomax’s complaint stemmed from a cease-and-desist letter it received from Dynacraft in May 2006, which allegedly claimed that:Homax’s use of NATURE’S OWN for its paint strippers infringes Dynacraft’s federally-register ed mark, BACK TO NATURE;Homax’s use of the the phrase “Color Changing Paint Stripper” infringes Dynacraft’s common law trademark rights in COLOR CHANGING PAINT STRIPPER; andHomax’s “selection of verbiage” in two of its labels are “close in comparison with the copyrighted verbiage in Dynacraft’s ‘Ready Strip’ label....
More About: Dress , Infringement , Trade , Makers , Settle

TTAB Dismisses Hormel's Petition to Cancel SPAM ARREST Registration
2007-11-27 03:56:00
On Nov. 21, the Trademark Trial and Appeal Board dismissed Hormel Foods Corp.’s petition to cancel the trademark registration owned by Seattle-based Spam Arrest , LLC, for SPAM ARREST, with the word “spam” disclaimed, for “computer software, namely software designed to eliminate unsolicited commercial electronic mail.” Hormel had argued Spam Arrest’s mark was not entitled to registration based on a likelihood of confusion with and dilution of Hormel’s family of famous SPAM trademarks. Spam Arrest responded that “spam” is a generic term, which in connection with the word “arrest” is not likely to cause confusion or dilute Hormel’s marks. (For more background, see STL’s report on the Feb. 23 hearing, which I was fortunate enough to attend.) TTAB Judges David Sams, Ellen Seeherman, and Gerard Rogers unanimously sided with Spam Arrest: “The word ‘s...
More About: Dilution , Petition

Seattle Law Blogger Meetup Moved to January 15
2007-11-26 02:17:00
Darn it, the date I had picked for the Seattle Law Blogger meetup conflicts with the Federal Bar Association of the Western District of Washington’s annual dinner. I also had heard rumblings of other potential conflicts. So, I am moving the event, executive-decision-style, to 6 p.m. on Tuesday, January 15. I hope this date works better. Heck, by January, two or three more Seattle law bloggers probably will have joined our ranks.The suggested discussion points and description of the event are here. If you are a Seattle law blogger, I hope to see you there. Please mark your calendars, spread the word, and let me know if you can attend!
More About: Meetup

Court Denies California Board Sports' Summary Judgment Motion Against Vans
2007-11-20 03:41:00
Plaintiff shoe maker California Board Sports , Inc., sued competing shoe maker Vans, Inc., for a declaration of non-infringement and non-dilution relating to Vans’ federal registration for the checkerboard pattern on its “Classic-Slip-On” shoe, or as I called them back in the day, “Spicoli Vans.” Vans counterclaimed against CBSI for trademark infringement, unfair competition, and misappropriation under California law based on CBSI’s use of a checkerboard pattern on its “Serve Black” shoe. Likelihood of confusion? Court says maybeCalifornia Board Sports shoe (top) and Vans CBSI moved for summary judgment on the grounds that Vans’ checkerboard pattern is generic or merely decorative; that the pattern is functional; that there is no likelihood of confusion; and that CBSI’s use of its checkerboard pattern is fair use. On Nov. 6, the Southern District of California denied UBSI’s motion in its entire...
More About: Infringement , Motion

Seattle: Home to Coffee (Trademarks)
2007-11-18 18:43:00
It’s true. We Seattlites fancy ourselves as living in the center of the coffee universe. After all, this is home to Starbucks, Seattle ’s Best Coffee , and Tully’s, among others. Not surprisingly, the association between Seattle and coffee hasn’t been lost on coffee sellers. A quick search of U.S. Patent and Trademark Office applications for trademark registration shows many remote coffee sellers want to cash in on Seattle’s coffee cache. For instance, just last week the Mississippi-based Seattle Drip Coffee Company obtained a registration for SEATTLE DRIP COFFEE COMPANY and Design for coffee and retail store services featuring gourmet coffee. In 2002, Michigan-based Kroger Co. registered SEATTLE CAFE ROAST and Design for coffee. Seattle Coffee Company, Inc., of Little Rock, Ark., similarly registered ESPRESSLY SEATTLE COFFEE CO. but lost it after Seattle’s Best Coffee Co. (of Seattle) petitioned to cancel the registration. Another Arkansa...
More About: Home , Trademarks

STL Grab Bag
2007-11-16 04:50:00
Haute Diggity! On Nov. 13, the Fourth Circuit found doggie-toy maker Haute Diggity Dog, LLC did not dilute Louis Vuitton Malletier, S.A.’s famous LOUIS VUITTON trademark by selling chew toys called “Chewey Vuiton.” Rebecca Tushnet’s discussion here. This is an important decision under the now year-old Trademark Dilution Revision Act. It’s also a loss for the owners of famous trademarks. The International Trademark Association had filed an amicus brief in support of Louis Vuitton. The Fourth Circuit apparently was not persuaded.Starbucks threatens Michigan’s Conga Coffee & Tea over the latter’s green concentric circle logo. Vegas Trademark Attorney reports on the dispute and chides STL for not beating him to the story.Likelihood of confusion?Imposters no more. In June, STL wrote about California’s proposed Truth in Music Advertising Act aimed at “imposter” bands. It’s no...
More About: Infringement , Grab

Acapulco Restaurant Dismisses Suit After Mexican Restaurant Changes Name
2007-11-15 05:53:00
In a relatively rare trademark filing for the Eastern District of Washington, Acapulco Restaurant s, Inc., brought suit against the owners of the Sunnyside, Washington, Mexican restaurant known as “Acapulco Restaurant.” Plaintiff alleged Antonia and Maria Chavez and the other unknown owners of the restaurant infringed plaintiff’s registered trademarks ACAPULCO, ACAPULCO MEXICAN RESTAURANT, and ACAPULCO RESTAURANT Y MEXICAN CANTINA in connection with restaurant and cantina services. After defendants proved they had changed the name of their restaurant to “El Faro,” plaintiff filed a notice of dismissal, which Judge Robert Whaley effected today.The case cite is Acapulco Restaurants, Inc. v. Chavez, No. 07-3091 (E.D. Wash.).Full disclosure: STL’s publisher represented the plaintiff in the case.
More About: Infringement , Suit

Ninth Circuit Allows PERFUME BAY But Not PERFUMEBAY
2007-11-13 05:36:00
The Vegas Trademark Attorney has a nice write-up on the Ninth Circuit ’s Nov. 5 decision in Perfume bay.com Inc. v. eBay Inc. Here’s the rub:“The district court did not clearly err in finding that conjoined forms of ‘perfumebay’ created a likelihood of consumer confusion. The district court, therefore, properly enjoined Perfumebay from utilizing such infringing marks. The district court also did not clearly err in finding that the non-conjoined forms of Perfumebay’s mark, such as Perfume Bay, did not create a likelihood of confusion.“However, the district court erred in holding that Perfumebay’s marks did not produce a likelihood of dilution, as the marks are nearly identical to eBay’s mark. The district court also erred in finding that eBay acted with unclean hands in its advertising, as the record did not affirmatively demonstrate the requisite intent to deceive.”The case cite is Perfumebay.com Inc. v. eBay I...
More About: Dilution , Infringement , Allo

No Fees Award in Mother v. LL Bean Trade Dress Case
2007-11-09 05:13:00
I’ve probably over-done my coverage of this case, but it’s been a fun one. To close the loop, I’ll just say that on Oct. 26, the Western District declined to award L.L. Bean , Inc., attorney’s fees, which L.L. Bean sought after obtaining dismissal of Mother , LLC’s trade dress infringement claims as a matter of law at the close of trial. After noting that fees awards are discretionary and the Ninth Circuit has “set the bar fairly high with regard to what constitutes ‘exceptional,’” the court explained its decision as follows: “The court found this case distinguishable from many, in that the parties had entered into a contractual arrangement regarding the sale and marketing of the plaintiff’s upland hunting vest by defendant. Defendant’s conduct was more than suspect from an equitable perspective, but because Congress was careful not to stifle competition, the plaintiff had a significant burden in establ...
More About: Fees , Dress , Trade

Western District Grants and Denies in Part Motion to Dismiss False Advertis
2007-11-08 05:50:00
Plaintiffs PlastWood SRL and its subsidiary, PlastWood Corp., compete with defendant Rose Art Industries, Inc., in the sale of magnetic construction toy sets. Rose Art’s product, MAGNETIX, is comprised of small plastic building blocks that are held together by magnetic force. Rose Art’s advertising and product packaging state that “500 designs” can be built by assembling MAGNETIX building blocks in certain described manners. PlastWood alleged in this Western District false advertising case that many of those structures cannot be built and collapse under their own weight. PlastWood also alleged that the phrase, “Ages 3 to 100,” which appears on MAGNETIX packaging, misrepresents that the blocks are safe for children three and older because the blocks actually are dangerous to small children. Rose Art moved to dismiss PlastWood’s complaint on the ground that the Child Safety Protection Act preempts PlastWood’...
More About: Grants , Part , Motion

On Infringement Safari
2007-11-07 06:37:00
Easing my way back into blogging mode, I can happily report that Yucatan’s colonial capitol, Merida, provided some STL fodder. One afternoon on infringement safari, I bagged some worthy game: a suspiciously greyhound-like logo on a city bus, and a more-than-suspicious imitation of VANS shoes called VEEENS. Pretty soon, the hunter realized, he’d need to retreat back to the cool climes of Seattle and get back to work.
More About: Safari , Infringement

STL on Vacation
2007-10-27 20:27:00
I’m taking a breather in the Yucatan, seeing as many Mayan ruins as I can. STL will resume posting on Nov. 7. Until then, tenga un feliz Dia de los Muertos!Templo de los GuerrerosPhoto Credit: Keith Pomakis
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Are Anti-Genericism Ads Effective?
2007-10-26 06:32:00
An anti-genericism ad from this month’s ABA Journal: “If you use ‘Xerox’ the way you use ‘zipper,’ our trademark could be left wide open. There’s a new way to look at it.“No one likes to leave their name open to misuse. Which is what happens when you use our name in a generic manner. Basically you’re putting it in a compromising position which could cause it to lose its trademark status. That’s what happened to the name ‘zipper’ years ago. So when you use our name, please use it as an adjective to identify our products and services, such as ‘Xerox copiers.’ Never as a verb: ‘to Xerox’ in place of ‘to copy,’ or as a noun: ‘Xeroxes’ in place of ‘copies.’ Now that you’re aware of all this, that should just about zip things up. Thanks.”These anti-genericism ads fascinate me. If they’re actually effective, why don’t we see m...
More About: Anti , Effective , Neri

Microsoft Files Three Lawsuits Against Online Sellers of Software
2007-10-25 02:41:00
On Oct. 19, Microsoft Corp. filed three substantially similar lawsuits in the Western District against the John Does who allegedly own and operate Web sites that sell unauthorized reproductions of Microsoft software. The subject Web sites are www.Econo-Soft.com, www.DVDFilm.tv, and www.ChildAOGroup.com. In each complaint, Microsoft alleges it placed orders through the Web site; provided payment information; received a link to another Web site in which to download the software; downloaded the software; and determined that the software was an “unauthorized reproduction” of Microsoft’s software. The software included Microsoft’s FrontPage, Windows Vista, and Office 2007 software.Microsoft seeks relief based on theories of trademark infringement, false designation of origin, copyright infringement, constructive trust, and accounting.Defendants have not yet answered the complaints, which are viewable here, here, and here.The case cites are...
More About: Software , Lawsuits , Online , Counterfeiting

Join the Seattle Law Blogger Meetup!
2007-10-24 02:22:00
STL to Host Seattle Law Blogger Meetup on Dec. 5 at Graham & DunnSeattle law bloggers unite! For one night, at least. On Dec. 5, STL will host a roundtable for Seattle-area law bloggers. Judging by the success of the Bay Area event (see organizer Eric Goldman’s description of last year’s get-together here), the first Seattle gathering should be productive and fun. Here are the sorts of things I’m interested in discussing:Why do you blog?Has blogging affected your practice? Your life?What benefits have you gained by blogging?How do you generate new content?Have you ever received a cease-and-desist letter?Have you ever censored yourself?What resources exist for learning about blog law?How have other lawyers reacted to your blog? Your clients? Your law firm? Your judge?How will law blogging change in the next few years?Do you have any great tools or tips?If you have ideas for other topics, let m...
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Microsoft Awarded $100k for Trademark Infringement in Default Judgment
2007-10-23 04:05:00
On Oct. 16, the Eastern District of California awarded Microsoft Corp. $100,000 in statutory damages for defaulted defendant Matthew Evans’ trademark infringement. Magistrate Judge Sandra Snyder concluded Microsoft’s allegations that Mr. Evans had sold counterfeit software bearing Microsoft’s registered trademarks in February and October 2006 adequately stated a claim for trademark infringement.Microsoft sought $100,000 in statutory damages for each of the three trademarks at issue. The court addressed the issue as follows:“Here, profits, expenses, and lost revenues are matters only of speculation. Plaintiff has not given the Court even the most basic information regarding its loss, such as the price or value of the goods or services subject to the violations. The precise scope of Defendant’s business is not clear. All that the allegations of the complaint indicate is that the Defendant used multiple counterfeit marks in [one] instance in Febr...
More About: Infringement , Counterfeiting , Judgment , Trademark

Nike Sues Five Web Site Operators for Counterfeiting
2007-10-21 19:38:00
On Oct. 17, Nike , Inc., filed suit in the Middle District of Florida against four Web site operators for allegedly selling counterfeit Nike-branded shoes. The defendants are Omar Lydner of Conn., Carl Lydner of Conn., Veta Brown of Georgia, 23Feet, Inc. of Florida and New York, and Anthony Ramos of Florida. Defendants’ alleged Web sites are www.rf45.com, www.retrofeet.com, www.23feet.com, www.pickyoursole.com, and www.jordans4sale (Omar Lydner); www.retrofeet.com (Carl Lydner); www.multikicks.com and www.perfectkicks.com (Brown); and www.23feet.com (23Feet and Ramos). Nike alleges that defendants are “manufacturing, distributing, offering for sale, and/or selling the Nike Trademarks in the form of counterfeit shoes bearing exact copies or colorable imitations of the Nike Trademarks,” including Nike’s NIKE, SWOOSH DESIGN, NIKE AIR, AIR JORDAN, and JUST DO IT registered trademarks.Nike also alleges it sent cease-and-desis...
More About: Site , Operators , Counterfeiting

Seattle Venture Capitalist Says Build Business Around Good Domain Name
2007-10-19 07:31:00
The Seattle Post-Intelligencer recently ran a story about a Seattle venture capitalist’s strategy: acquire a good domain name, then build a business around it.That’s Rob Monster’s idea, who the P-I says formed the Bellevue, Wash.-based Domain Strategies and joined the Boston-based Internet Real Estate Group as a partner.“Between the 5,000 names at Domain Strategies (OrganicSeasonings.com, IdentityLock.com and Anonymize.com, to name a few) and 600 names at Internet Real Estate Group (Software.com, Jeans.com and Chocolate.com), Monster thinks a compelling business or two could be created. Instead of managing those businesses on his own, Monster wants to serve as the matchmaker who links talented entrepreneurs with high-quality names.”He told the P-I: “I believe that for every business idea that correlates with a category-defining domain, there is a corresponding world-class management team and corresponding capital source th...
More About: Business , Venture , Domain Name

HomeTask Obtains Preliminary Injunction Against Former Franchisee
2007-10-18 05:01:00
On Oct. 16, Western District Judge Ricardo Martinez awarded franchisor HomeTask Handyman Services, Inc., a preliminary injunction against its former franchisee, Paul Szewczyk, based on Mr. Szewczyk’s covenant not to compete. The court, however, denied HomeTask’s motion to the extent it was based on claims of trademark infringement, dilution, and false designation of origin. Since my firm is involved in the case, that’s all I’ll say.The case cite is HomeTask Handyman Services, Inc. v. Szewczyk, No. 07-1283 (W.D. Wash.).
More About: Infringement , Junction , Mina , Franc

Electro Products Agrees to Permanent Injunction Enjoining Counterfeiting
2007-10-17 01:59:00
Plaintiff CommScope, Inc. of North Carolina and defendants Electro Products , Inc., and Daniel Edward Oberholtzer today agreed to a permanent injunction in the Western District enjoining defendants from using CommScope’s trademarks and from causing others to believe that defendants’ products are connected with CommScope when they are not. CommScope markets and distributes a SYSTIMAX- and PATCHMAX-branded patch panel that allows telecommunications cables used in high-speed voice and data networks to be connected and disconnected quickly. (STL’s previous discussion of Judge Ricardo Martinez’s refusal to stay the case pending an alleged criminal investigation of Mr. Oberholtzer here.)In agreeing to the injunction, defendants did not admit “any liability for intentional wrongdoing.” However, they did agree that “CommScope is likely to succeed in showing that Defendants have used and are likely to continue t...
More About: Counterfeiting , Junction , Rees

Jury Finds Competitor Infringed and Diluted Wham-O's YELLOW Trademark
2007-10-16 04:28:00
After seven days of trial, a Central District of California jury found on Oct. 11 that plaintiff/counterclaim defendant SLB Toys USA, Inc., had diluted defendant/ counterclaim plaintiff Wham -O, Inc.’s YELLOW color mark for “sliding surface of water slide toys.” The jury also found that SLB Toys had willfully infringed Wham-O’s YELLOW color mark, whether it was registered or unregistered, and engaged in false advertising. The jury awarded Wham-O $3.6 million and recommended that Judge Ronald Lew enhance their award by an additional $2.4 million. The jury found for SLB Toys on Wham-O’s claim that SLB Toys had infringed a separate “yellow/blue water slide” trademark. (See Vegas Trademark Attorney’s discussion of the decision here.)With regard to dilution, a subject in which I am particularly interested, the jury found as follows:CLAIM 4 — DILUTIONOn the claim of Wham-O against SLB for dilution...
More About: Dilution , Infringement , Yellow

How Courts Have Interpreted the Trademark Dilution Revision Act
2007-10-15 06:47:00
Courts have had a year to interpret the Trademark Dilution Revision Act. What have they decided? Here’s a survey of the decisions I have found most instructive.What is the significance of the Trademark Dilution Revision Act?In Dan-Foam A/S v. Brand Named Beds, LLC, 500 F.Supp.2d 296, 306 n.87 (S.D.N.Y 2007) (STL discussion here), the Southern District of New York summarized the TDRA’s significance as follows:“The TDRA became effective on October 6, 2006, replacing the Federal Trademark Dilution Act of 1996 (‘FTDA’). Specific changes to the federal dilution law under the TDRA include the establishment of a ‘likelihood of dilution’ standard for dilution claims, rather than an ‘actual dilution’ standard; a provision that non-inherently distinctive marks may qualify for protection; a reconfiguration of the factors used to determine whether a mark is famous for dilution purposes, including a rejection of dilution c...
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