Los Angeles Trademark Attorney Blog

Lamborghini Files Trademark for 'Huracan'

Thu, 10 May 2012 10:13:12 -0800

Los Angeles - Lamborghini has recently filed for a new trademark with the U.S. Patent and Trademark Office for 'Huracan'. The word translates to 'hurricane' in Spanish and is also known in ancient Mayan history as the god of fire, wind and storms. Lamborghini filed in class 12 for 'passenger cars and structural parts thereof' and class 28 for 'model cars'.

Although it is a guessing game to Lamborghini fans everywhere as to what kind of passenger car to expect, if the vehicle is anything close to the Urus SUV, which was unveiled at this year's Beijing motor show, fans can expect to be pleasantly surprised.

Lamborghini has not produced a sports utility vehicle since the 1980's boundary breaking LM002 until this year when it unveiled the Urus. The Urus is expected to go into production in 2015. Some believe that the Urus may actually eventually use the Huracan name instead. It is also rumored to be the replacement name for the revolutionary Gallardo.

In its history, Lamborghini has used words for its luxury cars that have a Spanish origin and are associated with bullfighting. For example, although we now know Murcielago to be one of the fastest cars in the Lamborghini family, the name originates from a famous Spanish bull. Also, Reventon, another Lamborghini trademark, was named after a bull that killed Felix Guzman, a famous bullfighter in 1943. Other Lamborghini cars whose names have a relation to Spanish bullfighting are the Gallardo and Estoque.

Obama Administration Gives Orders to File 'GI Bill' Trademark

Thu, 03 May 2012 17:00:15 -0800

Los Angeles - President Obama recently gave a speech to members of the military and their families where he spoke about his outrage that members of the military and their families were being targeted and taken advantage of because of their GI Bill. The President said to the crowd, "Sometimes you're dealing with folks who aren't interested in helping you" and "they don't care about you, they care about the cash." For this reason, President Obama ordered the Department of Veterans Affairs to file for the trademark 'GI Bill'. The Obama Administration believes that trademark filing will help to stop for-profit schools with "deceptively and fraudulently" targeting military families.

In 2010, President Obama created a Consumer Financial Protection Bureau that was formed to specifically aid veterans, members of the military and their families. Within this Bureau was a special Office of Service Member Affairs which worked with these families to "make better informed decisions regarding consumer financial products and services." However, after two years it seems as though military families are still being targeted by private for-profit colleges and universities that are eager to enlist these individuals for federal money in its pocket, also known as the GI Bill.

In his speech this week, Obama gave an example of a for-profit college that recruited marines with brain injuries who couldn't remember what they signed up for. He called this example "appalling and disgraceful" and urged the crowd to be aware of these types of people by saying, "they're trying to swindle and hoodwink you." Many of these colleges and universities have created websites to give the appearance that it is connected to the government in order to appeal to these families in particular.

President Obama is scheduled to sign an order that includes programs such as "Know Before You Owe", which schools can participate in through a voluntary basis. The "Know Before You Owe" program will allow potential students to get an estimate of just how much their education may cost them in total so that they are not blindsided by additional fees, interest, and/or penalties. This will also help with determining if a college or university is considered accredited before enrolling.

In an opposing view of the President's actions, Sgt. 1st Class Brian Cain stated, "To me the president needs to be taking care of world-sized problems" and "this is kind of like trying to kill a fly with an M-1 Abrams tank." Sgt. Cain stated that his chain in command already has programs set up to look out for these scams. The Association of Private Sector Colleges and Universities, a representative of for-profit schools, stated it was "disappointed Obama decided to bypass the Congress."

The GI Bill is estimated to pay out a staggering $9 billion this year alone to educate approximately 600,000 veterans. It is no wonder that according to a recent report by the Senate, for-profit schools spend a combined total of $3.7 billion on recruiting and marketing alone.

Los Angeles Based LMFAO Reveals Meaning of Name in Trademark Application

Mon, 23 Apr 2012 16:59:28 -0800

Los Angeles - LMFAO, the electronic pop duo with chart topping hits including "Sorry for Party Rocking" and "Sexy and I Know It" was recently required to reveal the meaning of its name in trademark filings. To this point it has been a mystery with much speculation as to what the acronym of the Los Angeles based pair really stood for. Included in the speculation were names such as "Loving My Friends and Others."

Trademark Attorneys representing LMFAO have recently filed four trademark applications with the U.S. Patent and Trademark Office. In the 'Miscellaneous Statement' portion of the applications it is stated that "the term LFMAO stand for "laughing my freaking ass off." Apparently, parents can breathe a sigh of relief that the 'F' stands for "freaking" as opposed to a certain four letter word that many claimed it to be. In 2008, when the band originally attempted to trademark its name, its applications were refused by the U.S. Patent and Trademark Office's examining attorney who claimed that the trademark consisted of "immoral, deceptive, or scandalous matter." In other words, trademarks with cuss words cannot be registered with the USPTO. With that lesson learned the band let those applications abandon and changed its strategy this time around.

The duo consisting of Stefan Kendal Gordy aka "RedFoo" and Skyler Austen Gordy aka "SkuBlu" have also filed for another questionable trademark containing a word that the USPTO may not approve. Appart from its envelope pushing trademark applications, the band has also filed for the "Party Rock" trademark. So, not only can you listen to LMFAO on the radio but you can also wear its "Party Rock" clothing as LMFAO are the owners of trademark registrations Nos. 4,010,158 and 4,013,318 for "Party Rock" in class 25 for apparel.

Rosetta Stone Trademark Infringement Case Against Google is Revived

Thu, 19 Apr 2012 09:59:33 -0800

Los Angeles - The U.S. Court of Appeals for the Fourth Circuit has given Rosetta Stone the opportunity to once again try and prove that Google committed trademark infringement on several of its trademarks.

In 2009, the language software maker sued Google for trademark infringement and accused the web search giant of selling trademarked Rosetta Stone phrases to "phony" or "copycat" software makers who in turn were Rosetta Stone's competitors. Rosetta Stone accused Google of allowing third party companies to purchase keywords such as its trademarked "Rosetta Stone" and "language library" so that when these words are searched sponsored ads of competitors appear. In response to this accusation a representative of Google stated, "We think that the legitimate use of trademarks as keyword triggers helps consumers to make more informed choices" and "For what remains of the case, we're confident we will prevail on both the merits and the law."

In 2010, the U.S. District Court for the Eastern District of Virginia dismissed Rosetta Stone's lawsuit along with the allegations against Google. The Eastern District Court of Virginia concluded that selling keywords does not cause confusion to consumers searching for the goods of Rosetta Stone. However, this week in Richmond, Virginia a panel of three judges in the Court of Appeals unanimously overturned a majority of the lower court's decision and now the case can be heard in federal court. Rosetta Stone's accusations that Google committed trademark infringement and negatively impacted the Rosetta Stone brand will be reviewed once again.

Michael Wu Rosetta Stone's trademark attorney stated, "We're deeply concerned about trademark infringement including the rampant problem of inline counterfeiting confusing consumers regarding our products." In its ruling, the Fourth Circuit of Appeals is directing the lower court to directly review just when Google began to "dilute" the trademarks owned by Rosetta Stone and if such trademarks were considered to be famous at the time.

In the original complaint filed against Google, Rosetta Stone claimed, "In April, 2004, Google adopted a policy change that permitted its customers to bid on third-party trademarks as keywords, even though its previous policy did not permit this if the trademark owner objected." Rosetta Stone claimed that Google changed its policy so it would increase its revenue by an estimated billion dollars.

Companies such as Ford Motor, Coach and 1-800 Contacts are among the many supporters of Rosetta Stone as these large corporations have previously filed similar lawsuits against Google which were based on confusingly similar sponsored links. If the outcome of the case sides with Rosetta Stone then Google may be in jeopardy of losing a large portion of its search revenue.

Trayvon's Mom Seeking to Trademark Rally Chants

Wed, 11 Apr 2012 17:21:47 -0800

Los Angeles - In a case that has garnered international media attention over the shooting death of a seventeen-year-old Florida boy, the boy's parents are attempting to trademark phrases chanted in rallies organized to pressure police into making an arrest in the boy's death.

Teenager Trayvon Martin was shot to death February 26th by a neighborhood watch patrolman, who claims he acted in self defense against the un-armed youth. The phrases "I am Trayvon" and "Justice for Trayvon" have been repeatedly chanted by supporters outraged over the fact that police have not arrested George Zimmerman on murder charges.

Trayvon's parents insist that they are not trying to make money off of their slain son, but want to secure the trademarks to spread awareness about the case. Last week, Trayvon's mother, Sabrina Fulton, applied to register the two trademarks with the United States Patent and Trademark Office. The trademark applications cover digital media, CD's and DVD's.

"We just appreciate the support that we've been receiving," Fulton stated to news reporters last week. "We're thinking about next steps and the plans we need to take right now to try to get some justice for our son."

The trademark attorney representing the family indicated that the family wanted to register the trademarks over fear that people would try to profit by exploiting their son's death. One example the lawyer gave was someone falsely claiming to be raising funds for the family. Besides the issue of preventing others from exploiting the family's tragedy, the lawyer also stressed that another purpose of the trademark filings was to keep putting pressure on the Sanford, Florida police to make an arrest in the case.

Trayvon's family is reportedly planning to start a foundation in the teen's name and wants to protect the phrases for the foundation's future use. The family's goal of the foundation is to help others dealing with similar issues.

Just days after Trayvon's mother filed her trademark applications, Los Angeles musician Marcus Singletary applied for the trademark "Justice for Trayvon" to appear on hooded sweatshirts. Singletary cited that he is interested in providing assistance to the family if the product is successful. He indicated that he wants to sell the hooded sweatshirts in protest to some popular media figures who felt that it was significant to claim that the teen was possibly shot over appearing suspicious because of his wardrobe choice, a hooded sweatshirt.

'Imported From Detroit' Trademark Lawsuit Headed to Mediation

Mon, 02 Apr 2012 17:22:30 -0800

Los Angeles - Chrysler Group LLC and Pure Detroit are headed off to mediation after a year of battling over the 'Imported From Detroit' trademark. The lawsuit stems from March 2011 when Chrysler sued Pure Detroit and its owners for using the phrase 'Imported From Detroit' on T-shirts in its retail and online stores. In 2011, Chrysler had just launched its new campaign for the Chrysler 200 in a two-minute television commercial during the Super Bowl XLV in which it used the slogan 'Imported From Detroit'. Chrysler claimed that Pure Detroit began selling the 'Imported From Detroit' T-shirts directly after that Super Bowl in which its campaign was launched.

In the following month of April 2011, Pure Detroit countersued Chrysler claiming that it did not have a valid use to the trademark because the "phrase is geographical, descriptive and arguably misleading." Pure Detroit's claim was also based on the fact that the auto company is based in Auburn Hills, Michigan and the assembly of the Chrysler 200, as shown in the advertising campaign, was assembled in Sterling Heights, Michigan. Also stated in the lawsuit was Chrysler's request that the court allow ceasing all sales of Pure Detroit's T-shirts that used the slogan. However, after reviewing the case, Judge Arthur Tarnow of the U.S. District Court rejected Chrysler's motion because there was no evidence that the automaker would suffer irreparable harm if the T-shirts were available for purchase. Therefore, throughout the lawsuit Pure Detroit has continued selling T-shirts using the slogan 'Imported From Detroit".

Pure Detroit is owned by Moda Group LLC, a merchandise retailer with ties to Detroit, who in April 2011 filed a letter of protest with the U.S. Patent & Trademark Office against the 'Imported From Detroit' trademark for "varying uses of the phrase."

In a statement posted on its website Pure Detroit states, "Chrysler does not have exclusive rights to the phrase "IMPORTED FROM DETROIT" because it is merely descriptive and not a protectable trademark." Chrysler confirmed the agreement to use mediation but had no further comment. Both companies have until April 3, 2012, to inform the court if an agreement has been reached through mediation.

Los Angeles Promoter 1oak Entertainment Sued for Trademark Infringement

Tue, 20 Mar 2012 15:27:47 -0800

Los Angeles - Butter IPH LLC filed a lawsuit on Friday against Jayson Sanchez in Las Vegas federal court for trademark infringement. Butter IPH claims that Mr. Sanchez is infringing on its multiple 1 OAK trademarks by using them to promote his Los Angeles based company "1oak Entertainment Group." The lawsuit states that Mr. Sanchez's company, a music entertainment promoting agency, is infringing on Butter IPH's current pending Trademark Applications with the U.S. Patent & Trademark Office which include words only and design marks of "1 OAK One of a Kind." The Applications were filed in international class 41 for night clubs and class 43 for bar services and cocktail lounge services.

In the lawsuit filed Friday, Butter IPH claims that its popular 1 OAK Nightclub in New York is "synonymous with glamour, luxurious excess, fame and fortune" and its latest 1 OAK club which opened in Las Vegas earlier this year at the Mirage Resort & Casino is "the hottest new nightclub in Las Vegas."

On 1oak Entertainment Group's website, 1oakmusic.com, it states that it is a "full service music management company based in Los Angeles, CA." 1oak Entertainment Group works with nightclubs, bars, and restaurants to book music acts and entertainment.

With both companies in the entertainment industry it is no surprise that Butter IPH took such action. The lawsuit states "The defendants could have adopted a trademark that did not include '1 OAK' and/or 'One of a Kind', such as Entertainment Group or Sanchez Entertainment Group, or any of a host of other names that would not have infringed upon Butter's rights," and "Instead, by using Butter's trademarks, the defendants are trading off of Butter's goodwill and reputation."

Jason Sanchez or a representative from 1oak Entertainment Group has yet to make a statement. Butter IPH LLC is requesting that the Las Vegas court grant its injunction to block Mr. Sanchez and 1aok Entertainment Group from using the name "1oak."

Swiss Shoe Maker Loses to K-Swiss in Trademark Infringement Dispute

Mon, 12 Mar 2012 16:27:53 -0800

Los Angeles - Swiss orthopedics and fashion sports shoe maker Kuenzli SwissSchuh AG has lost an ongoing trademark infringement dispute against K-Swiss and will give up its iconic five stripes trademark.

In light of staggering legal costs, the Swiss company's decision to drop the trademark came after it lost a trademark infringement case earlier this year to K-Swiss in a Duesseldorf superior court. Based on that court's ruling, Kuenzli was not able to use the five stripes on its shoes sold in Germany because it had not registered the trademark. This decision came down despite the fact that Kuenzli, which helped found K-Swiss, has been using the five stripes trademark for over fifty years, long before the American company.

"The legal row has brought us close to ruin," commented Kuenzli owner and Chief Executive Officer Barbara Artmann. "That's why we decided to drop the five stripes and introduce a new trademark that uses five blocks. Since we are also a fashion sports shoe producer, the move may be beneficial as today many sports shoe makers use stripes," she added.

Founded in 1966 by Swiss immigrant brothers Art and Ernie Brunner, the California-based K-Swiss first registered the five stripes trademark back in 1974 around the same time it launched its legendary white leather tennis shoe line. The Swiss brothers, who had become interested in tennis after immigrating to the United States, began importing Kuenzli tennis shoes. Much of K-Swiss's success has been attributed to Kuenzli founder, Kurt Kuenzli, who's name is the inspiration for the K in K-Swiss.

K-Swiss also reportedly used a near identical version of the Kuenzli tennis shoe as the inspiration of its famous line of tennis shoes.

Founded in 1927 in Switzerland, Kuenzli began using the five stripes logo in the 1950's for its line of orthopedic boots that utilized a special lacing technology in which the five stripes offered a stabilizing function. The company patented the lacing technology, however on the advice of its lawyer at the time, did not register the stripes as a trademark.

A spokesperson for K-Swiss would not comment on the issue.

Apple Sued For Fraud Over iPad Trademark in China

Fri, 02 Mar 2012 10:23:24 -0800

Los Angeles - On February 17, 2012, Proview Electronics, a computer monitor company based in China and subsidiary of Proview Technology, Inc., filed a complaint with the Santa Clara County Superior Court against Apple. In the complaint, Proview claims that it owns the Chinese trademark rights for iPad and is suing Apple for its use of the trademark in China.

This lawsuit, which has also been filed in various Chinese jurisdictions, and now in the U.S., stems back to 2006 when a company named IP Application Development Limited offered to buy the iPad naming rights in China from Proview for approximately $55,000. Proview claims that Apple hired a law firm to form the company IP Application Development Limited and bid on the iPad Chinese trademark name on Apple's behalf. Proview also alleges that there was no indication that IP Application Development Limited was linked to Apple. Proview states that it was assured by an employee of IP Application Development via email that the iPad trademark would be used to reference the company name as an acronym and that it would not be used to compete against financially distraught Proview. Also, Proview claims that the said email is fraudulent not only for hiding its relationship with Apple, but the author of the email used the false name of Jonathan Hargreaves to possibly disguise his connection to Apple.

On December 23, 2009, Proview sold the iPad trademark rights to IP Application Development Limited and on January 27, 2010, Apple revealed the iPad tablet computer, which sold about 15 million iPads worldwide last quarter. Proview alleges that in its 2009 contract with Apple, it sold the iPad naming rights but excluded China.

Proview has requested that its 2009 contract with Apple be declared void due to fraud. Also, Proview has requested that the courts grant its request of banning Apple from using the iPad trademark in China, as well as banning or suspending sales of the iPad in China. In multiple Chinese jurisdictions, some stores have removed iPads from shelves or have stopped selling iPads all together until the conclusion of this trademark infringement. Proview has threatened to sue Apple for $2 billion but has stated that it is open to settlement.

Entrepreneurs Try to Cash In On "Linsanity" Trademark

Tue, 21 Feb 2012 10:05:04 -0800

Los Angeles - People other than New York Knicks player Jeremy Lin are looking to profit from his fast-rising fame by attempting to trademark the word "Linsanity," the term being used to describe the frenzy surrounding the Taiwanese point guard.

Los Angeles resident Yenchin Chang was the first of four people other than Lin to file trademark applications for "Linsanity" with the United States Patent and Trademark Office. Chang, who also is of Taiwanese decent, is in no way affiliated with the twenty-three-year-old Lin, who has led the Knicks to a five-game winning streak after being let go by the Golden State Warriors.

"I wanted to be part of the excitement," stated Chang, an entrepreneur in the import/export business. He added, "I'm very proud of Jeremy." The Harvard-educated Lin was not selected in the NBA draft but was picked up in a partially guaranteed contract deal with his hometown team, the Golden State Warriors. The Warriors subsequently released him. Lin is the first American player in the NBA to be of Taiwanese decent.

According to the USPTO website, Mr. Chang filed for the trademark on February 7th. The "Linsanity" application was filed for use in relation to apparel. Another trademark filing was made two days later by Andrew W. Slayton of Los Altos, CA. Slayton, who used to coach Lin in high school, registered the domain names Linsanity.com and thejeremylinshow.com with both sites selling Lin-related merchandise.

Lin's New York Knicks' jersey has been the most popular online seller since February 4, when he scored twenty-five points and had seven assists in a game against the New Jersey Nets. Since then, Knicks hats and jerseys have become some of the most sought-after merchandise, more than any other NBA team currently.

Jeremy Lin is probably more concerned with maintaining his playing streak right now. However, to his credit he did file his own Linsanity trademark application on February 13th, just a day before two other would be entreprenuers. The trademark office will likely approve Chang's first filed application. It will then be up to Lin to contest the filing by alleging a likelihood of confusion and a bad-faith attempt to profit off of his popular name. The two applications filed after Lin's will also receive refusals and will most likely abandon.

Los Angeles Based Sprinkles Cupcakes Settles Trademark Infringement Lawsuit

Fri, 10 Feb 2012 11:46:31 -0800

Los Angeles - Sprinkles Cupcakes, headquartered in Los Angeles, has recently settled a trademark infringement lawsuit with a Fairfield, Connecticut bakery that was operating under a similar name. The popular cupcake chain, which first opened in Beverly Hills in 2005, was the first cupcake-only bakery.

Sprinkles filed its trademark infringement complaint in July after Pink Sprinkles Bakery opened up on the east coast. That business, founded in 2009, calls itself "Fairfield's first cupcake boutique in Brick Walk Promenade" and boasts about its staff's decades of baking experience.

In its complaint, Sprinkles claimed that the similar business names - Sprinkles and Pink Sprinkles - were likely to cause confusion in the marketplace, causing damage to Sprinkles and injuring its reputation in the trade and with the public.

"The client had no idea there was anything called Sprinkles Cupcakes, because there were no stores here," stated a trademark attorney for Pink Sprinkles. "It was an innocent mistake, and it was resolved amicably," he added. As a result of the settlement, Pink Sprinkles has changed its name to Pink Cupcake Shack.

According to the lawsuit, Sprinkles sells its cupcake mix to several Williams-Sonoma retail stores, some of which are in Connecticut. The chain also has existing cupcake shops in New York, Chicago, and several other major cities in the United States. The lawsuit also stated that Sprinkles has plans to expand to Boston, Philadelphia, Toronto, London, and Paris.

In the past few years, since the marketplace for trendy, decorative cupcakes has become more and more competitive, Sprinkles has stepped up its game to protect its intellectual property. The chain, a hit with women and children, has worked hard to build its brand and image. In fact, its founder Candace Nelson, is a judge on the Food Network's reality show Cupcake Wars and her famous cupcakes have been featured on "The Oprah Winfrey Show," "The Today Show," and "Entertainment Tonight," to name a few.

In 2008, Sprinkles went after a Montecito, California cupcake shop called Sprinkled Pink Cupcake Couture because it was using a name to close for comfort for the chain along with a similar decoration that was too close to its trademarked dot. The cease and desist letter demanded that the Montecito bakery immediately change its name and decoration even though the owner had registered the business name in 2003. The bakery is no longer in business.

Sara Lee Licenses SENSEO Trademark From Philips

Wed, 01 Feb 2012 11:29:35 -0800

Los Angeles - Sara Lee announced that it has signed an exclusive nine-year licensing agreement with Royal Philips Electronics. The agreement will cover all Philips-branded consumer coffee systems and will give Sara Lee full rights to use the SENSEO trademark.

Both companies currently co-own the SENSEO brand, with each having a fifty percent stake. Under the terms of the new agreement, Sara Lee will reportedly pay a total of $220.5 million in royalties to Philips over nine years.

According to a statement issued by Sara Lee Corp., the goal of the partnership with Philips is to drive innovation and expansion into new markets for its SENSEO brand, a global leader in the single-serve coffee segment. Since 2001, the two companies have collaborated on SENSEO, developing it into one of the world's leading single-serve coffee systems, with over 33 million appliances sold worldwide. Sara Lee has been the manufacturer of the individual coffee pods, and Philips is the designer, manufacturer, and distributor of the single-serve coffee machines.

Under the agreement, Philips will continue to control the design, production, and distribution of the coffee machines, with Sara Lee taking full control of the SENSEO trademark, expanding it to new markets across the world. Sara Lee reportedly plans to accomplish this through its recent acquisitions of two overseas coffee and tea companies, CoffeeCompany, a chain of sixty cafes in the Netherlands, and House of Coffee, a beverage foodservice company with customers in Denmark and Norway.

"Owning 100 percent of SENSEO, our most global coffee brand, is a major step for 'CoffeeCo' as we prepare for our upcoming spin-off into a separate, publicly-traded company," said Michiel Herkemij, chief executive officer of Sara Lee Coffee and Tea. Herkemij added, "With increased innovation, we believe this move will enable us to build on our leading position and further position SENSEO as a global power brand in the coffee segment."

Sara Lee Corp., established in 1956, owns a large portfolio of well-known trademarked brands, including Ball Park, Hillshire Farm, Jimmy Dean, Pickwick Teas, Douwe Egberts, Sara Lee, and SENSEO. The company, which employs approximately 20,000 people worldwide, brings in nearly $8 billion in annual net sales from its brands of food and beverage products. With its announcement that the company will divide into two publicly-traded entities, Sara Lee will continue its focus on the North American meat market while it seeks expansion into the international coffee and tea markets as well.

Los Angeles District Court: Canadian Toymaker Sues Lego For Trademark Infringement

Tue, 24 Jan 2012 08:45:03 -0800

Los Angeles - In a long-running trademark infringement battle over the rights to the shape of interlocking bricks in toy construction sets, Mega Brands Inc. of Canada has filed yet another action against the Lego Group.

According to the action, filed in U.S. District Court in Los Angeles, the Montreal-based Mega Brands is seeking to invalidate Lego's trademark rights to the designs. In a recent news release, the Canadian toymaker said it is also seeking unspecified "other remedies."

The recent court action was apparently prompted when the United States Customs and Border Protection agency advised Mega Brands that it "intends to restrict the importation of certain of its products which have been sold in the U.S. for over twenty years," a spokesperson for the company said in a statement. When asked about the ongoing trademark dispute, Mega Brands stated that it is simply challenging Lego's attempts to use United States trademark laws to protect its well-known plastic mini-bricks used by children to construct mechanical models.

According to Mega Brand's complaint, Lego's interlocking block patents expired more than twenty years ago, prompting courts in several other countries to rule against its claims that its famous toy bricks are unique and protected and that no other company can make toy blocks using the same eight-knob pattern.

"Courts around the world, including the United States, have ruled against its attempts to use trademark law for functional elements," a spokesperson for Mega Brands said.

The Canadian company, which manufacturers and markets its own brand of interlocking bricks called Mega Bloks, says that it will seek a temporary restraining order and a preliminary injunction from the court to ensure that its Mega Bloks sold in the United States are not affected by Lego's trademark.

The Denmark-based Lego Group has been fighting off competition to manufacture and sell the plastic bricks from Mega Brands for years. Initially designed by Danish carpenter Ole Kirk Christiansen, the plastic building blocks went on to become the company's flagship product and are still enjoyed by children around the world. The company's legal troubles began in 1978, when it lost patent protection on the toy bricks, however it has continued to assert its legal rights using trademark laws.

Lego's claim that its has exclusive rights to the interlocking toy brick technology has been routinely dismissed by courts in Canada, France, Germany, Italy, the Netherlands, and Spain. Furthermore, in September 2010, the European Court of Justice denied Lego's attempts to use trademark laws to protect the shape of its multi-colored building blocks.

Penn State University Sues Property Companies for Trademark Infringement

Mon, 16 Jan 2012 10:25:06 -0800

Los Angeles - Two Indiana-based property rental companies are being sued by Penn State University for alleged trademark infringement over the way they advertise properties to be rented for Penn State football weekends.

The trademark infringement lawsuit, filed Tuesday in United States Middle District Court of Pennsylvania, makes the accusations against Double Domer Properties and Rent Like a Champion, both of South Bend, Indiana. According to the complaint, the use of Penn State University house rentals causes confusion in the public and the implied association that the university is involved with the rentals. Specifically, the lawsuit contends that the two rental companies use the Internet, including the website of the New York City chapter of the Penn State Alumni Association, to advertise properties for rent in the State College, Pennsylvania area during football season. One alleged infringing website named in the lawsuit is PSUFootballHouseRentals.com.

Potential tenants can view the properties on the websites at no charge with the two companies taking a small percentage of revenue when a listed home is rented for a football weekend. Statements from the lawsuit add that the infringing website includes an image of a paw print, which represents the Nittany Lion mascot of Penn State. The website also mentions that it is a proud partner of the Lot 13 blog, which offers visitors tips on local bars close to the university as well as barbeque and cocktail recipes.

Penn State maintains that the companies have rented more than seven hundred properties for the football weekends and estimates that they have generated more than $1.1 million in revenue.

In July, the Collegiate Licensing Co., acting on the behalf of Penn State, sent a cease and desist letter to the defendants asking them to stop infringing its trademarks. Reportedly, an attorney representing Double Domer and Rent Like a Champion agreed to advise the defendants to make changes to their websites so as not to cause confusion or the possibility of association between them and the university. Furthermore, upon agreeing to advise his clients, the attorney however did state in his response letter that PSUFootballHouseRentals.com does not infringe on university trademarks since it is descriptive of a rental service provided and no merchandise is actually sold.

"Because this use in no way competes with the uses of the university, there is little likelihood of confusion possible," the attorney said in his response to the Penn State cease and desist letter.

In addition to asking for a permanent injunction banning any further infringement, Penn State is also seeking unspecified damages as well as the destruction of any materials infringing its trademarks.

The Case for Color: Can Louboutin Protect Red-Sole Trademark?

Mon, 09 Jan 2012 12:00:47 -0800

Los Angeles - Later this month, the United States Court of Appeals for the 2nd Circuit will hear arguments from both sides on high-fashion shoe designer Christian Louboutin's appeal to retain the trademark for red lacquered shoe soles. This stems from a trademark infringement lawsuit Louboutin filed last year against competitor Yves Saint Laurent (YSL).

Louboutin's posh heels, worn by trendy celebrities and businesswomen alike, are known exclusively for the red colored bottom of the shoe. In court, the designer will argue that the red-colored soles serve only to identify the Louboutin brand, much like Tiffany's robin's-egg blue packaging for its pricey jewelry. Consequently, Tiffany's filed an amicus brief on behalf of Louboutin's interpretation of color and trademarks.

When the case was initially presented to a judge, defendant YSL countered that Louboutin admittedly had aesthetic reasons for lacquering the soles of his shoes red. YSL's attorneys therefore maintained that Louboutin is not entitled to a trademark for the red soles, citing the United States Supreme Court's 1995 decision in Qualitex v. Jacobson Products. In that particular case, the court ruled that a color can only be trademarked if it "can act as a symbol that distinguishes a firm's goods and identifies their source, without serving any other significant function." Furthermore, according to YSL's defense, since the red color serves only as an aesthetic function as in Louboutin's shoes, it cannot be trademarked.

In court last week, YSL's interpretation of trademark law got endorsements from eleven law school professors, who filed an amicus brief in support. A statement from the professors' brief read: "This court should recognize that the shadow cast by a trademark in a single color on a fashion item creates enormous uncertainty for other designers and should regard claims of single-color trademarks in fashion with considerable skepticism." This opinion was also shared by Manhattan federal court Judge Victor Marrero, who in August denied Louboutin's request for an injunction to bar all of YSL's red-sole shoes.

This is definitely not a slam-dunk case. However, fashionistas around the world would probably agree that Louboutin's red soles distinguishes the shoes as high-fashion, high-priced luxury items that few can afford. In Louboutin's defense, many women would contend that if someone sees the red soles on your heels, they will know who you're wearing.

Oral arguments for the case will be presented at 2:00 on January 24.