Posted On: April 28, 2011

TTAB Affirms Trademark Attorney’s Likelihood Of Confusion Refusal Of EZ “GRO” Over “EEZY GRO” Registration

ttab-trademark-attorney-examining-likelihood-of-confusion-ez-gro-eezy-gro.jpgThe Trademark Examining Attorney refused registration of Gardenlife, Inc.’s application for the trademark EZ GRO for “living flowers and plants and plant seeds” in light of the previously registered EEZY-GRO trademark for “flower pots and planters” under 15 U.S.C. §1052(d). The examining attorney also required a disclaimer of the word “GRO.” On appeal, applicant capitulated and included a disclaimer of the word “GRO.” As a procedural matter, the Board excluded materials attached to applicant’s brief from consideration on appeal because they were untimely under 37 C.F.R. § 2.142(d). Thus, the sole remaining issue on appeal was whether there was a likelihood of confusion between the two trademarks.

The Board considered the du Pont factors of (1) the similarity/dissimilarity of the trademarks, and (2) the similarities of the goods. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). As to the first factor:

We find the marks EZ GRO and EEZY-GRO substantially similar in terms of appearance, both comprised of two terms; the second in each being the identically misspelled word GRO (“grow”), the first in each being different fanciful spellings of the word “easy,” respectively EZ and EEZY. Although registrant’s mark contains two additional letters, they are not likely to be recognized and do not serve as distinguishing features because of their imbedded placement within the overall structure of registrant’s mark. In addition, and contrary to applicant’s contention, the hyphen in registrant’s mark is not a distinguishing feature and serves mainly as spacing between the two terms. See Goodyear Tire & Rubber Co. v. Dayco. Corp., 201 USPQ 485, 489 n.4 (TTAB 1978) (difference of hyphen insignificant).

(Side Note: It’s generally not a good idea to misspell common words in your trademarks, see #4 in trademark selection article here.)

The Board also rejected applicant’s argument that the two marks are pronounced differently because “it is settled

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Posted On: April 24, 2011

Brighton Collectibles Sues Pedre Watch For Watch Design Copyright Infringement

San Diego, CA – Brighton Collectibles designs and manufactures fashion accessories, including a watch sold under the Laguna trademark. Brighton registered the copyright in its Laguna watch design in March of 2000.

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Defendant Pedre Watch Company is accused of making a less expensive imitation. As a result, Brighton claims that “the Infringing Watch has been advertised, marketed and/or sold to a substantial number of consumers, thus lessening the uniqueness of Plaintiff’s Laguna Watch. The case is Brighton Collectibles, Inc. v. Pedre Watch Co., Inc., CV11-0637 BEN (S.D. Cal. 2011).

Posted On: April 21, 2011

Mattel Loses MGA's Bratz Doll Case, Jury Awards Trade Secret Damages to MGA

copyright-bratz-mattel-trade-secret-jury-verdict-lose-win.pngSanta Ana, CA -- The jury in the Mattel v. MGA battle over the Bratz dolls determined that MGA did not infringe any copyrights and did not steal the idea or concept from Mattel. Instead, the jury has awarded at least $88.5 million to MGA for Mattel's misappropriation of MGA's trade secrets. The verdict form is available here.

This second round is in stark contrast to the first trial where the jury found for Mattel, which was overturned on appeal. I wouldn't be going out on a limb by predicting that Mattel will appeal the verdict, after it's post trial motions to set it aside, of course.

The case is Bryant v. Mattel, SACV 04-09049 (C.D. Cal. 2004).

Posted On: April 17, 2011

Genentech Files Cabilly III Patent Infringement Lawsuit Over Benlysta And Arzerra Sales

patent-infringement-biotech-glaxo-genentech-Cabilly.jpgLos Angeles, CA – Genentech and City of Hope are the owners of U.S. Patent No. 7,923,221 (“the Cabilly III patent”), entitled “Methods of Making Antibody Heavy and Light Chains Having Specificity for a Desired Antigen,” issued on April 12, 2011. Plaintiffs wasted no time suing GlaxoSmithKline, Human Genome Sciences, and Lonza Biologics for patent infringement, which suit was filed on the patent’s issue date. The ‘221 patent claims priority to the Cabilly II patent, filed in 1988, which in turn claims priority to the Cabilly I patent, filed in 1983. The Cabilly III patent is the most recent arsenal introduced into years of patent lawsuits, appeals, and USPTO re-examination proceedings. Details here. The Cabilly II patent was the subject of the landmark U.S. Supreme Court decision in MedImmune v. Genentech, 549 U.S. 118 (2007), which eliminated the "reasonable apprehension of suit" test for establishing declaratory judgment jurisdiction.

The Cabilly patents relate to methods for producing antibodies using recombinant DNA. Plaintiffs allege that HGS and GSK have entered into a co-development and commercialization agreement for the development and sale of Benlysta®. Plaintiffs further allege that Lonza Biologics manufactures ofatumumab in the United Kingdom and supplies it to GSK, with knowledge that GSK incorporates ofatumumab into the final Arzerra™ product.

The case is Genentech, Inc. et al. v. Glaxo Group Limited, et al., CV11-03065 SVW (C.D. Cal. 2011).

Posted On: April 11, 2011

Starclipz’s Trade Secret and Fraud Lawsuit Removed To Federal Court

removal-federal-court-jurisdiction-preemption-starclipz-stargreetz.pngLos Angeles, CA – Starclipz sued Stargreetz and its principals in Los Angeles Superior Court for unfair competition, trade secrets misappropriation, interference with prospective advantage, conversion and other causes of action, none of which specifically included a federal cause of action. Starclipz alleges that it conceived and developed a business that allows consumers to personalize greeting messages by including celebrity clips from their favorite movies. Plaintiffs claim that they had numerous meetings with Eric Frankel, Lucy Hood, and Linda Abrams to fund and develop a business, but Defendants “misappropriated Plaintiffs’ ideas and creative materials for their own unauthorized use and pecuniary benefit” by developing www.stargreetz.com.

In removing the case to federal court, Defendants assert that the state causes of action are merely disguised claims for copyright infringement that are preempted by the Copyright Act. Thus, although Defendants concede that there’s no basis for removal under the “well-pleaded complaint rule,” they claim that removal is proper under the complete preemption doctrine, wherein the existence of a preemption defense to a state-law claim gives rise to federal question jurisdiction.

The case is Starclipz, LLC v. Stargreetz, et al., CV11-2779 CAS (C.D. Cal. 2011).

Posted On: April 4, 2011

Musician Sues Sesame Street For Copyright Infringement – 17 U.S.C. § 410(c) Issue

childrens-music-copyright-lawsuit-dragon-tales-17-usc-410c.jpgLos Angeles, CA – Jose-Luis Orozco is accusing Sesame Workshop of using his copyrighted song in its Dragon Tales television program without authorization. According to the complaint, Orozco wrote the music and lyrics to the children’s song El Chocolate in 1971, which was based on his travels and experience to Sonora, Mexico in 1958. In 1981, Orozco recorded the song on an album, which song was also included in the companion song book. The song was not copyrighted, however, until 1996.

Orozco alleges that his El Chocolate song was performed in the “Super Snowy Day” episode of Dragon Tales. Orozco also claims that the song was also included on a Dragon Tales DVD. The song is very catchy, so don’t click play below if you don’t want an earworm.

The case is Juse-Luis Orozco v. Adelaide Productions, Inc. et al., CV11-02691 DMG (C.D. Cal. 2011).

PRACTICE NOTE: I cannot emphasize the importance of registering copyrights within the first five years from the initial date of publication. Under 17 U.S.C. § 410(c), a copyright registration obtained within five years of first publication serves as prima facie evidence of the validity of the copyright and of the facts stated therein.