Defendant owned a property that was long alleged to house individuals selling counterfeit goods. Watchmaker Omega bought two counterfeit watches from a retailer at the same location and commenced a lawsuit against the property owner for contributory trademark infringement. Surviving a motion to dismiss by the property owner, the case…
What do Trinidad, Tobago, Barbados, Peru and Jamaica have in common? By filing for trademark registration in those venues, Apple, and other large companies, are able to hide up and coming products and their names from the public, for months, while obtaining some level of trademark protection. Fortune magazine explains how…
Land O’ Lakes Outdoors, Inc. and Land O’ Lakes Tackle Co., Inc., began their business selling fishing tackle in a Wisconsin town called Land O’ Lakes, a region “dotted” with lakes attractive to fishermen. Since 1997, these businesses sold fishing tackle to retailers in a number of states. In 2000,…
A supplier was found liable for selling counterfeit Fendi handbags, and after two separate lawsuits was obligated to Fendi and a retailer to whom those fake bags were sold for substantial damages. In an attempt to avoid paying those damages, the supplier turned to its insurance carrier for indemnification, based…
This article nicely points out the folly of an insufficient showing of proof in a domain dispute proceeding, even if the respondent defaults. And worse, the claimant gets one shot—if the claim is denied there is no second chance outside of court.
The mark “Dickman’s” could not be registered as it was deemed a surname and ineligible for registration, despite the fact that the applicant’s last name was not Dickman. This write up provides the details, and illustrates why blindly filing a trademark registration application is not always as straightforward as it…
Following our last article about “use” and its relationship with the trademark application process, another case we came across further illustrates this concept, albeit in a more limited manner. Weld-Tech and Aquasol Corp. both sell a plumbing apparatus called “EZ-Purge.” After Aquasol filed for and received trademark registration for the…
Late in 2015, Apple’s trademark application for “IPOD,” as used in connection with the pamphlet or instruction manual that accompanies an iPod, was found by an appeals panel to not be “used in commerce” in connection with any good, and denied registration by the United States Patent and Trademark Office…
There has been recent discussion about what constitutes “use” of a mark when seeking trademark registration (and which applies equally to a service mark). This discussion has addressed the requirement that a proposed trademark be “used” or be “in use” when a trademark registration is filed with the United States…
A dispute between The KatiRoll Company, Inc. and Kati Junction, Inc., both of which sell Indian food, produced a court decision useful in examining trademark/servicemark and trade dress issues. In 2002, KatiRoll opened its first store-front in New York City. That location would expand to two additional restaurants in Manhattan.…